Brigard Castro

In the world of technology and cellular communications, intellectual property disputes often revolve around Standard Essential Patents (SEPs)—patents that are indispensable to the implementation of a specific technical standard. A technical standard is a set of established norms or requirements for a particular technology, often developed by standard-setting organizations (SSOs) such as the International Organization for Standardization (ISO), the European Telecommunications Standards Institute (ETSI), or the Institute of Electrical and Electronics Engineers (IEEE). When a patent is classified as a SEP, it means that it is impossible to implement the standard without infringing the patent. For example, if a SEP is essential to 5G cellular networks, then no device can access or browse the Internet, depending on the claims of the patent in question, through a 5G network without using that patented technology. Owners of SEPs have a general obligation—arising from their participation in SSOs and their declaration of a patent as essential—to license those SEPs on fair, reasonable, and non-discriminatory (FRAND) terms. Patent holders typically declare their patents as essential during the standard-setting process, a step often required to promote transparency and facilitate licensing negotiations. To prevent abuse of the essential nature of SEPs, SSOs mandate that SEP owners license their patents under FRAND conditions to avoid excessive royalties or unfair terms. Disputes over what constitutes FRAND terms and how good-faith negotiations should proceed have been the subject of litigation in the United States, the United Kingdom, China, and Europe. In Latin America, however, these cases are rare. Nevertheless, Colombia’s litigation environment recently attracted SEP owner Ericsson to initiate over 45 actions against Apple (in 2022) and Lenovo/Motorola (in 2023), targeting their Colombian entities and distributors. Arguably, the pressure exerted by these legal actions contributed to the monetization of Ericsson’s patents. The defense strategy employed by the implementers also played a key role in negotiations. But this raises a critical question: why is Colombia perceived as a favorable forum for SEP assertion, and what options remain available to implementers? Colombia offers a robust patent protection regime aligned with international standards. It is a signatory to major international treaties, including the Paris Convention and the Patent Cooperation Treaty (PCT), which establish minimum protection standards and promote international harmonization. Patent regulation in Colombia is primarily governed by Decision 486 of 2000 of the Andean Community, a regional organization where Bolivia, Ecuador, and Peru are also Member States. Patent rights in Colombia are obtained through an application process before the Superintendence of Industry and Commerce (SIC), which functions as the trademark office, patent office, consumer protection authority, data protection authority, and antitrust regulator—and exercises certain judicial powers. Patents are valid for a non-renewable term of 20 years from the application date, subject to annuity payments. Patent applicants who previously filed in another Paris Convention country enjoy a 12-month priority period and may benefit from the Patent Prosecution Highway to expedite examination based on prior decisions from other patent offices. Colombia has become an attractive venue for SEP litigation for several reasons. First, it maintains a bifurcated judicial system for patent cases: while “civil” courts (including the jurisdictional branch of the SIC) handle infringement disputes, “administrative” courts decide on patent validity or nullity challenges. Civil litigation between private parties falls under the civil jurisdiction, led by the Supreme Court of Justice, with the Superior Tribunals acting as appellate courts and Circuit Courts serving as trial-level judges. By contrast, cases involving state entities fall within the contentious-administrative jurisdiction, led by the Council of State. This jurisdiction also oversees nullity actions challenging the validity of patents granted in Colombia because in these actions, the SIC, acting as the patent office, is the defendant. In practice, this bifurcation means that a validity challenge cannot be raised as a defense in an infringement case. Civil judges are not competent to rule on patent validity; such matters must be addressed separately before an administrative court. Second, Colombian procedural law on preliminary injunctions makes the country particularly attractive for patent asserters. A central debate exists over whether injunctions should be governed by Colombia’s domestic procedural code or by the Andean Community’s Decision 486. The issue remains unresolved and is pending clarification by both domestic courts and the Andean Court of Justice. Nonetheless, if domestic procedural rules are applied, several aspects favor patent holders: A wide range of injunctive relief is permitted—such as orders to cease use, block imports, or prohibit advertising. In patent disputes, injunctions often target the importation, commercialization, and promotion of allegedly infringing products. Preliminary injunctions are ex parte proceedings and are frequently issued ex parte. Judges have discretion to hear both parties but are not required to notify the defendant before granting relief. Appeals do not suspend enforcement. Once a preliminary injunction is granted, motions for reconsideration or appeal do not stay its effects unless and until overturned. Appeals typically take 6–8 months. Procedural rules allow—but do not require—consolidation of claims. Multiple filings are not prohibited if they relate to different patents. Antitrust defenses may be considered weak or at least do not operate on preferred timeframes for the defendant. Allegations of abuse of the dominant position in the marketplace must be addressed by the antitrust authority (regulator) and not by the civil judge; therefore, they are not (in principle) admissible in IP infringement litigation. Colombian courts have not yet accepted anti-suit injunctions (ASIs) or declaratory judgments of non-infringement. To date, two major SEP infringement cases have emerged in Colombia: Ericsson v. Apple: Ericsson filed multiple actions against Apple’s Colombian affiliate. Circuit Court No. 43 of Bogotá issued a preliminary injunction prohibiting the import, sale, and advertisement of iPhone and iPad models supporting 5G technology. The litigation followed the breakdown of global negotiations to renew a license agreement originally signed in 2015. Ericsson v. Lenovo/Motorola: Ericsson also sued Lenovo and Motorola’s Colombian distributors, alleging infringement of its 5G-related SEPs. The SIC, acting as a judicial authority, granted an injunction ordering the suspension of importation, sale, and promotion of nine mobile devices, mainly targeting those that were able to connect or browse on  the 5G network of cellular communications. Unfortunately, judicial decisions have been inconsistent. In Ericsson v. Apple, the Bogotá Court of Appeals reversed the injunction after identifying contradictory evidence in the case file. In the Lenovo matter, rulings varied, with some suggesting that injunctions based on SEPs may lack proportionality or necessity, while others upheld the SIC’s injunctions. This uncertainty persists. Despite efforts to provide Colombian courts with elements of the international dynamics of SEP cases, FRAND obligations, and the limited utility of injunctions in such cases, Colombian courts have yet to establish whether FRAND-related defenses can independently defeat a preliminary injunction request. Consequently, Colombia remains an appealing venue for aggressive SEP assertion. Recommendations for implementers: If your organization manufactures or distributes technology that connects to the 5G network or any other standardized technology, especially in the field of cellular communications, Colombia could present a significant litigation risk. To reduce exposure and respond effectively, implementers should consider the following: Engage experienced local counsel early. SEP disputes are complex and often develop quickly. According to Colombian law, motions of reconsideration and appeal must be filed (typically) only three business days after the notification of the decision that grants the preliminary injunction. Hence, delays can lead to lasting commercial harm. A well-prepared local team is essential. Build internal awareness. Make sure your legal, regulatory, commercial, and operations teams understand the potential consequences of an SEP dispute in Colombia, including the risk of sudden disruption to imports and sales. Prepare to respond on multiple fronts. Colombian SEP litigation can involve simultaneous actions in civil and administrative courts, as well as proceedings before the patent office or antitrust authority. A coordinated legal strategy is crucial. Monitor public court databases regularly. Preliminary injunctions may be issued ex parte, meaning that the defendant receives no advance notice. Early detection—even of unofficial means of notification—can make a critical difference. Develop a technical and evidentiary toolkit. In past cases, implementers have successfully introduced technical evidence showing that certain devices did not practice the asserted patent claims. Evidence showing lack of use, non-infringement, invalidity, etc., or even evidence of good-faith FRAND negotiations, both globally and locally, can also weigh in an implementor’s favor. Coordinate with communications teams. These disputes often generate media coverage and public scrutiny. Clear messaging aligned with legal strategy can help mitigate reputational risk. By Laura Ángel-Jaramillo, Director of Intellectual Property Litigation at Brigard Castro Email: [email protected]