Patent Litigation 2019 Comparisons

Last Updated June 20, 2019

Law and Practice

Authors



Bustamante & Bustamante has been providing legal services for the registration of trade marks, licences, and patents since 1956. The firm's first team was its IP Department, and it works towards ensuring that every trade mark, invention, and creation have the necessary legal protection to ensure their integrity and market recognition. The team's commitment, excellence, and dedication are deserving of the trust of large multinationals, which have found at Bustamante & Bustamante the support they need to accomplish their goals. The IP team endeavours to understand the identity of each business, as well as the interests and goals of the creators of that identity, before determining strategies for brand protection and market position. Global means are being sought for IP protection, and the firm has made great strides towards the digital era. The IP team comprises three senior partners, three senior associates and two associates. Within the patent litigation sector, its key practice areas are patents, industrial designs, utility models, and plant varieties.

Our legislation provides two systems for the protection of inventions, patents and utility models. Our system is based on statutory law. However, case law is considered as a secondary source for intellectual property (IP) authority and judges.

Both types of rights – patents and utility models – have the same grant procedure.

The procedure starts with the application, which could be a national application, claiming priority application or a National Phase application under the Patent Cooperation Treaty (PCT). Once the application meets all formal requirements it is published in the Intellectual Property Gazette, and third parties have 60 days to file opposition claims. The applicant may request the IP Office to suspend the publication of the application for 18 months.

The applicant must request the patentability exam within six months from the date of publication.

The IP Office can conduct up to three patentability exams, prior to the payment of the corresponding fee. The applicant may modify the application at any time before the issue of a resolution.

The IP Office issues a resolution granting or rejecting the application. The applicant may appeal the resolution.

The grant procedure takes five-six years. The inventor does not need legal representation to file the application. However, for application procedures, such as responses to patentability exams, annuity payments, response to opposition claims etc, the applicant may need a lawyer.

Costs are provided upon request. The average costs of a patent application, until it is granted, are as follows:

  • official fees: approximately USD3,500 (10 claims/20 pages of patent application). Additional fees must be paid for each extra claim and page, plus annuity fees; and
  • professional fees, which vary depending on the case. Prosecution fees will depend on the complexity of the procedure.

The average cost of a utility model application, until it is granted, is as follows:

  • official fees: approximately USD400; and
  • professional fees, which vary depending on the case. Prosecution fees will depend on the complexity of the procedure

The term for patent rights is 20 years from:

  • the national filing date, if it is a national based application;
  • the priority application date in case of claiming priority; or
  • the international filing date in the case of PCT applications.

The term for the utility model right is ten years from the national application filing date.

The owner of a patent or utility model has the right to:

  • manufacture the product;
  • use the procedure, in case of procedure patents; and
  • use, offer for sale and sell the product or procedure.

The owner has the obligation to exploit the invention.

In general, there is no protection for technical intellectual property rights after their maximum term has elapsed. However, regarding pharmaceutical and agricultural products, the protection against unauthorised use of test data may be considered as a further protection once the patent right has lapsed.

Within the grant procedure, once the application is published in the Intellectual Property Gazette, third parties have 60 days to file opposition claims.

If the patent or utility model application is rejected, the applicant can file an appeal before the Intellectual Rights Board or a judicial motion before the Administrative Court.

The legal consequence of a failure to pay an annual fee is the expiration of the patent application or registration. The applicant may file an appeal against the expiration resolution, although such an appeal is unlikely to succeed.

The owner of a technical intellectual property right may initiate the following actions against infringement:

  • a cease and desist letter;
  • administrative action before the IP Office;
  • border measures (customs);
  • legal action;
  • mediation; and
  • arbitration (if both parties agree to submit the conflict to an arbitration tribunal) .

Third parties have the following options to remove the effects of a granted intellectual property right.

A nullity action: here the third party must prove that the IP right that has been granted infringes the law.

A compulsory license: this applies when the invention has not been exploited by the owner or an authorised person for four years since the application date or three years from the granting date. The third party must demonstrate the luck of exploitation of the invention.

Compulsory licences may also be granted if the owner has anti-competitive acts, or the owner refuses to grant a licence agreement.

There are no particular admissibility requirements.

At first instance, civil judges and the Administrative Court have jurisdiction over intellectual property matters. As a second instance, the Provincial Court has jurisdiction only over judicial procedures handled by civil judges, the Administrative Court is considered as a court of last resort.

The National Court has jurisdiction as an extraordinary instance, for procedures handled by both civil judges and the Administrative Court.

Besides the IP Office and the corresponding judges, there are no specialised bodies or organisations for the resolution of intellectual property disputes.

Regarding injunctive relief lawsuits, the plaintiff may demonstrate the potential infringement as a pre-requisite.

Regarding damage relief lawsuits, the plaintiff may have initiated an administrative or judicial, and, either injunctive relief measures must have been granted or a favourable infringement resolution issued. 

The parties involved in intellectual property matters must be legally represented.

Interim injunctions are available. The IP right-owner must demonstrate a potential infringement for the interim injunction to be granted.

A potential opponent may request a declaration of no infringement by the judge to protect him or herself, even before an infringement action has been initiated.

According to Ecuadorian legislation, the following acts are not considered as infringements and consequently limit the patent rights:

  • non-commercial acts;
  • the use of the invention for experimental purposes;
  • the use of the invention for educational purposes;
  • the use of the invention for scientific or academic investigation; and
  • the use of biological materials as the initial basis with which to create a new viable biological material.

A party to an intellectual property matter may request the IP Office or a judge to request relevant information and evidence from the other party.

The initial pleading may:

  • identify the patent right owner;
  • identify the infringed patent right;
  • identify the possible infringer;
  • detail the circumstances of the possible infringement; and
  • file and announce evidence that will be filed to demonstrate the infringement.

There are no special provisions for lawsuits in intellectual property proceedings that differ from non-intellectual property proceedings.

Once the defendant files a response to the pleading, the plaintiff can file new arguments and request new evidence regarding the allegations of the defendant.

Class Actions are not permitted under Ecuadorian legislation.

According to Ecuadorian legislation, the following may be considered as restrictions when asserting a patent right:

  • exhaustion of rights: when the product of the invention has already been introduced to the market by an authorised distributor or licensee, and a third person sells or offer it for sale;
  • biological material obtained by the reproduction, multiplication or propagation of a patented biological material.

Anti-competitive acts, such as abuse of market share, may also be considered restrictions.

There must be two parties; the infringer and the owner or affected party. Third affected parties may participate in a trial under special circumstances. A licensee or authorised distributor may file an action for infringement.

According to Ecuadorian legislation, there is no difference between direct and indirect infringement.

The scope of a patent right is determined by the granted claims and the technical description that must support the claims. There are no specific principles, our law established that the scope of the patent right is given by the granted claims, consequently, the court or resolution body must follow the criteria issued by the Patent Office when granting the patent right.

According to Ecuadorian legislation, the following defences may be brought by a possible infringer:

  • patent exhaustion;
  • prior use;
  • permitted uses;
  • compulsory licence;
  • anti-competitive acts; or
  • abuse of a patent right.

Experts, when requested by the parties, provide the judges or courts with technical information regarding the alleged infringement.

There is no separate procedure to determine the terms of patent’s claims.

Nullity: if the right has been granted infringing legal provisions, such as a right granted to a non-patentable invention; or

Cancellation: lack of payment of an annuity fee.

Partial annulment is possible if the cause for the annulment does not affect all the claims. The non-affected claims will remain in force.

The owner can amend claims, within an annulment procedure, if the amendment does not extend the scope of the invention, and is supported by technical information.

Annulment and infringement proceedings are not heard together. However, if the annulment is filed as a defence to an infringement procedure, the procedure must be suspended until the annulment is resolved.

There are no special procedural provisions for intellectual property proceedings.

Technical judges determine IP cases. The parties have no influence on who is appointed as decision-maker.

The parties may settle a case at any time. According to Ecuadorian legislation it is mandatory to hold a mediation session when bringing an action.

If the parallel proceedings may lead to the invalidation of the patent right, such as an annulment, the infringement proceedings must be suspended until the parallel proceedings are resolved.

The patentee may request damages, including enhanced damages, lawyers’ fees and trial expenses. The judge does not have discretion in ordering remedies; these must be granted according to legal provisions and may not exceed the amount requested by the patentee.

A prevailing defendant may request damages caused by the action, reimbursement of fee and lawyers’ fees.

There are no different types of remedies for different technical IP rights.

There are no specific practices or procedures such as a stay of injunction when the infringement is declared at first instance. When filing an appeal, the infringer, in order to suspend effects such as payment of damages and fines, is requested to deposit a bail at the court to secure a future payment.

There are no special provisions concerning the appellate procedure for intellectual property proceedings.

When filing an ordinary appeal, it implies a review of the facts. Regarding extraordinary appeals (National Court of Justice), it is limited to a legal review.

Professional fees regarding warning letters, cease and desist letters, review of and preparation for the case, may arise before filing a lawsuit. The amount will vary depending on the case.

As a rule, there are no court fees. Fees may arise if a technical report of an expert is requested. It is calculated according to the complexity of case and the area of expertise.

The losing party is required to reimburse fees to the prevailing party, but only if the prevailing party has specifically requested that in the lawsuit or in the response to the lawsuit.

Alternative dispute resolution is not a common way of settling an intellectual property case. Mediation and negotiation are the most used actions.

For an assignment to be valid, it must be written and registered at the Patent Office.

The former owner or the new owner files the assignment application, together with the assignment document and the official fee. The Patent Office then issues an assignment certificate.

For a licence agreement to be valid, it must be written and registered at the Patent Office.

The owner or licensee files the licence agreement and pays the official fee. The Patent Office then registers the agreement.

Bustamante & Bustamante

Amazonas Ave
E4-69 & Patria
COFIEC Building
Piso 4, 5, 10, 11, 16, 17, 18

+593 2 2562 680

bustamanteybustamante@bustamante.com.ec www.bustamanteybustamante.com.ec
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Law and Practice

Authors



Bustamante & Bustamante has been providing legal services for the registration of trade marks, licences, and patents since 1956. The firm's first team was its IP Department, and it works towards ensuring that every trade mark, invention, and creation have the necessary legal protection to ensure their integrity and market recognition. The team's commitment, excellence, and dedication are deserving of the trust of large multinationals, which have found at Bustamante & Bustamante the support they need to accomplish their goals. The IP team endeavours to understand the identity of each business, as well as the interests and goals of the creators of that identity, before determining strategies for brand protection and market position. Global means are being sought for IP protection, and the firm has made great strides towards the digital era. The IP team comprises three senior partners, three senior associates and two associates. Within the patent litigation sector, its key practice areas are patents, industrial designs, utility models, and plant varieties.

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