Patent Litigation 2021

Last Updated February 15, 2021

Ecuador

Law and Practice

Authors



Meythaler & Zambrano Abogados has around 36 legal professionals specialising in intellectual property, litigation, antitrust, tax, labour, corporate, public procurement, investigation, and healthcare, operating from offices in Quito and Guayaquil, and connected to a wide network of correspondents in America, Asia and Europe. The firm provides comprehensive advice according to the current situation. The scope of professional resources that its lawyers can deploy translates into professional, comprehensive, effective and top-quality care. The firm has advised clients of great national and international prestige.

The protection of inventions in Ecuador is carried out through an application that is presented to the competent authority. Depending on what is intended to be protected, a determination will be made regarding what type of invention is to be registered. The protection and processing of each right are included in the law, specifically in the Organic Code of the Social Economy of Knowledge, Creativity and Innovation (the Organic Code) and Decision 486 of the Andean Community as a supranational norm.

The registration process for patents is as follows.

  • Request before the competent authority, the National Secretariat for Intellectual Rights (SENADI), with the respective payment of the official fee.
  • Formal examination – analysis of the documentation presented in the application according to the legal requirements (within 15 days).
  • Publication of the application in the official document (Intellectual Property Gazette).
  • Submission of oppositions by third parties within 30 days (brands and designs) 60 days (patents) extendable from publication.
  • If opposition is presented, the applicant will be notified within 30 days (marks and designs) 60 days (patents) in order to present their arguments and evidence.
  • In the case of patents, within 60 days of the publication, an examination of the invention will be requested; if the national office finds that it is not patentable, it will notify the applicant in order to present the necessary modifications (the patentability examination may be carried out two or more times at the request of the interested party).
  • In the case of trade marks, there is one registration exam, it takes around six months to file.
  • Once this term has expired, or if opposition is not presented, the background or registrability examination will be developed.
  • Resolution. of the registration process.
  • In the event that the resolution is not favourable, a subjective appeal may be filed; if the resolution is favourable, the title of the requested right is prepared.

The right is granted with the resolution of the competent authority, which must be final, that is, without risk of appeal or challenge.

The approximate time for granting a patent is three to four years. Ecuadorean inventor can do so without the need for a lawyer, but it is recommended that the filing of the patent application is done through a lawyer.

If a patent of a foreign owner is presented, it is required that they have an attorney in the country in order to carry out the necessary procedures for the granting of the patent.

Regarding costs, an initial payment must be made together with the application, the payments corresponding to the patentability examinations and the maintenance fees.

In the case of patents, the period of protection is 20 years and cannot be renewed.

In the case of brands, the protection is ten years and can be renewed without an established limit.

In the case of utility models, the protection is for ten years without the possibility of renewal.

In the case of industrial designs, the protection is for ten years without the possibility of submitting a renewal application.

In the case of plant varieties, the protection is provided for 18 years in the case of forest, fruit and ornamental varieties; and for 15 years for all other varieties.

One of the main rights held by the owner of an intellectual property right is to prohibit the use of the invention by third parties.

Regarding their obligations, holders must make the payments corresponding to the annuities and make use of their invention.

There is no additional protection in Ecuador for technical intellectual property rights after their maximum term has lapsed.

A third party can participate during the concession process by means of an opposition that is presented within sixty days after the publication of the process in the Intellectual Property Gazette, but their legitimate interest must be proven.

Administratively, there is the possibility of filing an appeal or an extraordinary appeal for review.

In court, a subjective appeal can be filed before the Administrative Litigation Court.

If the payment is not made within the established time, it can be paid within the next six months with a 50% surcharge. If the payment is not made within that time, the patent will be declared expired.

It is possible for an intellectual property owner to make transfers, name changes or change addresses. Regarding change of the actual right granted, however, no changes can be made once the protection is granted in accordance with the request.

In the event that there is an infringement of any intellectual property right, there is the possibility of initiating an action for administrative protection. Through this action it is possible to request precautionary measures that allow that, until there is a resolution, the offence cannot continue to be committed.

In addition, legal actions can be initiated in order to obtain the use of precautionary measures and compensation for damages.

Currently, the remedies available to third parties wishing to challenge IP rights include:

  • opposition;
  • cancellation action due to lack of use;
  • compulsory licence;
  • extraordinary appeal for review;
  • annulment action; and
  • appeal

For admissibility in all cases, demonstration of legitimate interest is required. In addition to this, it is required that the formal requirements be met, among which are:

  • the general requirements of the law;
  • the detailed facts;
  • the announcement of evidence;
  • legal grounds;
  • the act that is challenged; and
  • proof of the payment rate.

Regarding the challenge of administrative decisions that deny the registration of patents, judicial jurisdiction falls on the contentious-administrative courts. The decisions of these courts are open to cassation appeals before the National Court of Justice.

Regarding infringement of rights: for precautionary actions and claims for damages, jurisdiction lies with the civil judge at first instance, with the Chamber of the Provincial Court at second instance and with the Chamber of the National Court at third instance.

There are no specialised bodies or organisations for the resolution of conflicts regarding intellectual property in Ecuador.

To file a patent lawsuit, it is necessary to be the legitimate owner of the intellectual property right. In other words, the patent must be granted to initiate a claim regarding the claim of the right. In addition, if the conflict is for a licence to use, the licence must be registered in the same way.

The prerequisites for filing the claim must be analysed on a case-by-case basis. It is important to take into account that the procedure is oral and that, in the presentation of the lawsuit, evidence must be presented to demonstrate the violation or the fact for which the lawsuit is filed.

When dealing with controversies, the parties are required to be represented by a lawyer in order to protect the right to a fair trial.

Interim injunctions can be requested when initiating an administrative guardianship or a civil claim for precautionary action.

Interim injunctions are granted with the qualification of the administrative action or the civil lawsuit, in the event that the plaintiff demonstrates or presents substantial documents by means of which the presumed infringement of the right or the infringement thereof is evidenced.

Potential opponents may request the deposit of guarantees or require a bond to be posted by the owner.

In Ecuador there are no special provisions regarding time-barred IP actions.

In administrative protection processes, it is possible to request that SENADI request information from the possible infringer or even carry out an inspection of the possible infringer in order to verify whether there is indeed evidence of infringement of intellectual property rights.

The results obtained will be adequate as evidence to prove the infringement of the right and grant the definitive precautionary measures.

Regarding what the initial petition must contain, the competence, active legitimation, passive legitimation, the narration of the facts and the rights that have been violated and the claims must be mentioned.

Together with the lawsuit, the evidence must be presented and the conduct and relevance of the same must be announced in order for them to be approved by the judge in a public hearing.

The Organic Code indicates that actions for intellectual property infringement are to be initiated through a summary procedure, that is, with a single public hearing.

There are no collective actions for intellectual property rights in Ecuador.

There are no restrictions in Ecuadorean law on IP rights-holders asserting those rights against others.

The necessary parties to initiate an action for infringement are the owner of the intellectual property right and an infringing party.

In the event that there is a licence for use, the provisions of the contract must be taken into account. It may be that the contract is one where the impossibility of the licensor being able to act in infringement action procedures is expressed.

There is no difference in Ecuadorean law between direct and indirect infringement, in both cases it is understood as an offence.

In cases in which an infringement of a patent whose object is a procedure to obtain a product is alleged, it will be up to the defendant in question to prove that the procedure used to obtain the product is different from the procedure protected by the patent whose infringement is alleged.

For these purposes, it is presumed, unless proven otherwise, that any identical product produced without the consent of the patent owner, has been obtained through the patented procedure, if:

  • the product obtained with the patented procedure is new; or
  • there is a substantial possibility that the identical product was manufactured through the procedure and the owner of the latter's patent cannot establish through reasonable efforts which procedure was actually used.

In presenting evidence to the contrary, the legitimate interests of the defendant, in terms of the protection of their business secrets, will be taken into account.

The scope of protection of a patent is determined through its granted stakeholders, therefore, it is important to present expert evidence that proves the scope of the patent, and in the case of drugs, it is important to determine the active principle that protects it.

With this test the judge can have the elements of conviction to analyse whether or not there is an infringement of patent rights.

As for the resolution of disputes, this is based largely on the evidence that demonstrates the commission of the infraction.

Faced with a possible infraction, an administrative guardianship can be presented so that the infraction can be stopped.

Experts in the field are those officials in charge of analysing inventions and determining whether they meet the requirements established by law.

There is no separate procedure for construing a patent's claims. Please see 1.2 Grant Procedure for Intellectual Property Rights.

To present any recourse or action a legitimate interest is required.

Regarding the revocation of intellectual property rights, there is the possibility of filing appeals and extraordinary review resources are potentially available, taking the time established for the presentation of each one.

Regarding the revocation/cancellation of a right, an action for nullity or an action for cancellation due to lack of use can be filed.

Partial revocation is possible, for example, in the case that only one of a suite of products is being used, the right may be limited to that product. In the case of patents, it can be limited to a certain extent.

It is not possible to modify a patent in revocation or cancellation proceedings.

There is a difference in the time taken by revocation/cancellation proceedings and by infringement proceedings since the decision in infringement cases is manifested by a resolution, on which an appeal can be presented.

Regarding the cancellation, it is an action that is presented separately. In this sense, the decisions regarding each case will be resolved independently.

The procedures regarding intellectual property rights are regulated by the Organic Code. In addition to this, as a supranational norm there is Decision 486 of the Andean Community.

The cases are resolved by legal judges in court.

There are no specialised judges for intellectual property cases.

The parties present their evidence and through them provide sufficient elements for the judge to resolve the case, but they do not influence who will make the decision.

At the beginning of the process the judge must propose a conciliation between the parties. But once the process has started, there is also the possibility of reaching an agreement between the parties and desisting from the process at any time.

Sometimes an infringement procedure can be suspended until the validity of the intellectual property right is resolved. But, in general, it is at the discretion of the authority since there is no rule that mandates such a suspension.

As a remedy for an infringement of intellectual property rights, it is possible to file a precautionary measure action and then a main lawsuit where the affected damages are claimed.

The injunctive relief may be requested through an administrative action initiated before the competent authority, which is SENADI, or through a precautionary action initiated before a civil judge.

The main lawsuit action for damages is presented before a civil judge.

The judge may order the payment of damages, as well as the payment of procedural costs and professional fees.

In the event that the precautionary measures are revoked, either by SENADI or the civil judge, due to the lack of proof for the existence of the infringement of intellectual property rights or due to their expiration, the defendant has the right to initiate a damages action against the plaintiff, seeking compensation for the damages caused and payment of the procedural costs.

The remedies are the same for all intellectual property rights.

If the patent were granted in the first instance and its resolution were appealed, it would not be possible to initiate actions against the possible infringer, by virtue of the fact that the administrative act that granted the patent would not be final. For this reason, in this moment, the right does not exist.

Alternative measures can be taken to protect the rights of the owner of the invention until the patent is granted, one of these measures is the protection of test data, in the case of drugs or agrochemicals, for which, it will be necessary that the holder requests the medical registration of their medicine. This requires the existence of a new molecule and that the authority receiving the test data for its registration.

With these requirements met, the owner of the invention will have an exclusive right over the invention and may initiate actions against the offender for violation of the test data.

The special requirement to present the appeal is the term, this must be within ten business days counted from the day following the notification of the resolution.

Whosoever files an appeal must substantiate in law the articles that allow the filing of that appeal and the factual arguments for it.

Once the appeal is presented, the Collegiate Office of SENADI must qualify the appeal and notify its content.

Subsequently, the interested party must respond to the appeal and present evidence.

The parties may request a public hearing, which will be granted if SENADI considers it appropriate.

Finally, the Collegiate Office must resolve the questions being appealed.

The appeal involves a review of facts and technical and legal arguments.

Generally, costs are calculated by hours worked.

Typical costs incurred before filing a lawsuit would include costs for:

  • case analysis;
  • development of a defence strategy;
  • presentation of warning letters; and
  • gathering and obtaining evidence.

The hours invested vary depending on the complexity of the case and the evidence it is necessary to obtain.

There is no specific court fee. Legal expenses will be calculated according to the procedure and the process.

In the case of administrative actions such as administrative guardianship, there is an official rate.

The costs of litigation are borne upfront by the claimant and the defendant.

The invested expenses may be reimbursed by the defendant if the judge so decides.

Disputes are regularly resolved through administrative or judicial actions. There are cases of mediation and arbitration that have been carried out for breach of contract, such as assignments and licences of use.

An intellectual property right can be assigned through a contract between the owner of the right and the third party, in which the will of the owner of the right to assign to the third party, under a specific or agreed price, is declared.

The contract must be legalised before a notary public.

The patent holder must submit the assignment request through a SENADI form, attaching the contract. After that, SENADI will approve the assignment by resolution and will be marginalised in the corresponding title.

The process takes approximately three to four months.

There is no special process for assigning an IP right. However, in practice, the patent holder must submit the assignment request through a SENADI form, attaching the legalised contract. After that, SENADI will approve the assignment by resolution and will be marginalised in the corresponding title. The process takes approximately three to four months.

The requirements to grant the licence of an intellectual property right are:

  • licence agreement granted by the right-holder in favour of a third party;
  • legalisation of the agreement, with recognition of signatures before a public notary; and
  • registration or inscription of the licence in SENADI.

To legitimately license an IP right, the following steps must be taken.

  • The consent of the owner of the intellectual property right must be granted through a licence agreement in favour of a third party.
  • The signatures on the licence agreement must be acknowledged before a notary public.
  • The right-holder must register the contract with SENADI by:
    1. filling out a form provided by SENADI on its website;
    2. entering the contract with its enabling documents (certificates, powers of attorney, etc) in the SENADI system; and
    3. paying the official fee set by SENADI for licence registration.
  • Once the request is submitted, SENADI will analyse the documents presented and will then grant the registration of the licence to use the intellectual property right.
Meythaler & Zambrano Abogados

Av. 6 de diciembre 2816 y Paúl Rivet
Edificio Josueth González
Piso 10
Quito
Ecuador

(593 2) 223 2720

info@lmzabogados.com www.meythalerzambranoabogados.com
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Law and Practice

Authors



Meythaler & Zambrano Abogados has around 36 legal professionals specialising in intellectual property, litigation, antitrust, tax, labour, corporate, public procurement, investigation, and healthcare, operating from offices in Quito and Guayaquil, and connected to a wide network of correspondents in America, Asia and Europe. The firm provides comprehensive advice according to the current situation. The scope of professional resources that its lawyers can deploy translates into professional, comprehensive, effective and top-quality care. The firm has advised clients of great national and international prestige.

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