Considerations when transferring or licensing technology to Latin America.
Before entering into negotiations, it is highly advisable to perform a Freedom to Operate (FTO) analysis to assess the viability of IPRs registrations and their commercial potential in the relevant country.
Be aware that patent licenses are presumed to be non-exclusive in certain countries like Mexico, Uruguay, Paraguay and Argentina, which means that the owner is entitled to exploit the patent unless otherwise agreed upon.
Constant monitoring of the licensee is the best way to ensure compliance with the agreement. Take into account that compulsory licenses may be granted under certain circumstances, such as failure to exploit (Argentina, Brazil, Mexico or Chile, among others).
Limitations and special requirements in Latin America
As a general rule, licenses and assignments of IPRs must be in writing and shall be register before the National Intellectual Property Office (NIPO). However, this will depend on the country and the IPR concerned.
Pharmaceutical, biochemical, GMOs and biotech related patent applications often require prior approval by the competent authority (such as in Chile, Brazil or Peru), while products of human consumption and those that may affect human health must obtain market authorizations (e.g. Colombia).