This country-specific Q&A provides an overview of Patent Litigation laws and regulations applicable in Ecuador.
What is the forum for the conduct of patent litigation?
The Administrative Court and the civil judges have jurisdiction regarding intellectual property matters in Ecuador, but none of them have specialist patents/technical judges.
The competence of each case is determined in the INGENIOS CODE, the Administrative Litigation judges are competent when there is a challenge to an administrative resolution that took effect. Civil judges are competent when actions are filed against a third party that has infringed the rights of the owner.
What is the typical timeline and form of first instance patent litigation proceedings?
Lawsuits are filled before civil court in case of infringement right or Administrative Court judges in case of invalidity proceeding of administrative resolution, who will dismiss or acknowledge them in a period of about a month.
Those that are acknowledged by the Administrative Court judges will be resolved in two hearings, but those acknowledged by the civil judges will be resolved in a single hearing. Therefore, time of judgment depend on the dates in which the judges decide to hold those hearings, which vary from three to eleven months since they acknowledge the lawsuit or since the first hearing.
Any party can orally fill an appeal on the hearing, which will be resolved in a period of about two to twelve months by the respective Civil Provincial Court.
Can interim and final decisions in patent cases be appealed?
The interim and final decisions of the judges of the Administrative Court cannot be appealed, but those of the civil judges can. Appeals must be filled during the hearing and are resolved by the respective Provincial Courts within two to twelve months since the appeal was filled. No permission is required to appeal.
When appealed, the first instance decisions will be stayed pending.
Which acts constitute direct patent infringement?
When a product is claimed in the patent, constitute direct acts of patent infringement when the third party without authorization of the owner of the right manufacture the product; offer for sale, sell or use the product, or import it for any of these purposes.
When a procedure is claimed in the patent, the acts that constitute direct patent infringement are using the procedure or execute any of the acts previously described.
Do the concepts of indirect patent infringement or contributory infringement exist? If, so what are the elements of such forms of infringement?
The concepts of indirect patent infringement or contributory infringement do not exist in the Andean Community, thus neither in Ecuador.
How is the scope of protection of patent claims construed?
The scope of protection conferred by the patent shall be determined by the wording of the claims, description, and drawings, or in their case, the biological material deposited will serve to interpret them.
Usually, the claims are presented in accordance with the Andean Patent Manual, which states the following:
The claims may be independent or dependent. A claim shall be independent when it defines the subject matter to be protected without reference to a previous claim. A claim will be dependent when it defines the matter to be protected by referring to a previous claim. A claim that refers to two or more previous claims will be considered a multiple dependent claim.
Claims are the most important part of the application, as they define the invention to be protected and define the scope of that protection. It is essential that they are clear and concise so that: i) it can be compared and differentiated from the state of the art in order to verify the patentability requirements; and ii) can unambiguously determine the extent of the rights of the patent owner.
The requirement of clarity and conciseness applies to each claim individually, as well as to all claims as a whole.
What are the key defences to patent infringement?
The main factor in defending patent infringement is the evidence, especially expert reports that validated the unauthorized use of the patent and samples of the infighting product.
What are the key grounds of patent invalidity?
Patents need to be novel, inventive, and capable of industrial application. If the lack of one of these requirements is demonstrated, the absolute nullity of the patent registration may be requested and conceded.
Furthermore, invalidity may be requested if the object of the patent does not constitute an invention; if the patent had been granted for an invention not patentable; if the patent does not sufficiently disclose the invention; if the claims included in the patent do not were entirely supported by the description; and if the granted patent contained a further disclosure broad that in the initial application and this implies an extension of protection.
How is prior art considered in the context of an invalidity action?
Once the analysis of the claims, description and drawings has been carried out, and the subject of the invention has been understood, the examiner enters to determine the state of the art.
To determine whether an invention is novel, having already determined the state of the art, the following steps must be followed:
Comparing element by element between what is in the state of the art and the proposed solution which must be carried out first by comparing the independent claim with the entire content of each publication or other disclosure, taken in isolation.
Compare whether the claimed invention is identical to what is disclosed in the state of the art. If the matter by itself contains all the characteristics of the claim analysed, it is considered to be nothing new.
Consider within the state of the art, the content of a patent application pending before the national office whose filing or priority date is prior to the filing or priority date of the application being studied, always before said content is included in the request of the previous date when it was published.
If the invention is included in the state of the art, it will not be patentable.
Can a patentee seek to amend a patent that is in the midst of patent litigation?
The owner of a patent cannot modify the patent since the right is granted in the way it was presented and with their respective claims. In the event of litigation, the process will be based on the right previously granted.
Is some form of patent term extension available?
There are no patent terms extensions available in Ecuador, nor in the Andean Region.
How are technical matters considered in patent litigation proceedings?
Technical matters are considered in patent litigations proceeding by way of competing expert witnesses appointed by the parties, which give oral and written evidence during patent litigation proceedings and can be cross-examined.
Although the law determines that these experts must be impartial, their fees are paid by the party that choose them, so they are usually selected for their ability to demonstrate what the party wants.
In addition, it is possible to request the judge to appoint an expert if it is essential.
Is some form of discovery/disclosure and/or court-mandated evidence seizure/protection (e.g. saisie-contrefaçon) available, either before the commencement of or during patent litigation proceedings?
Evidence is presented by the parties and is incorporated to the process during hearings, thought there might lawfully exist court-mandated evidence to help resolve the dispute. All documentary evidence is under the judge´s custody.
It is important to take into account that to obtain all the evidence at the time of filing the claim, there are previous acts that are carried out, such as: request for administrative protection before the competent authority, in order to obtain; i) formal information request from the possible offender; ii) inspections of institutions or even the home of the offender if necessary in order to validate the existence of an infringement.
Are there procedures available which would assist a patentee to determine infringement of a process patent?
As Ecuador is a member of the Andean Community, it is part of the Andean Common Industrial Regime, which includes the Decision 486 -Common Provisions on Industrial Property- that in its article 240 states that in any cases alleging infringement of a patent whose subject matter is a process for obtaining a product, the defendant in question shall be responsible for providing that the process used by him to obtain the product is different from the process protected by the patent allegedly infringed. To that end, it shall be presumed, in absence of proof to the contrary, that any identical product produced without the consent of the owner of the patent has been obtained by the patented process if: (a) the product obtained using the patented process is new; or (b) there exists a reasonable possibility of the identical product having been manufactured using the process, and the owner of the patent for the latter is unable to establish, after reasonable effort, what process was actually used.
Therefore, if any of those two assumptions are met, the reversal of the burden of proof in respect of the process patent infringement will occur.
Are there established mechanisms to protect confidential information required to be disclosed/exchanged in the course of patent litigation (e.g. confidentiality clubs)?
There is no mechanism to protect confidential information required to be disclosed or exchanged during patent litigation because all information is made public when presented to the judge.
Is there a system of post-grant opposition proceedings? If so, how does this system interact with the patent litigation system?
When the competent authority on intellectual rights issues a resolution, it is possible to present appeals through administrative channels. Among the resources mentioned, an appeal and an extraordinary appeal for review can be filed.
In addition, subjective appeals before the Administrative Court can be filled without exhausting the administrative procedure.
While the causes are being processed, the administrative resolution is waiting to be modified or ratified.
To what extent are decisions from other fora/jurisdictions relevant or influential, and if so, are there any particularly influential fora/jurisdictions?
All Andean Community Members (Bolivia, Colombia, Chile, Ecuador and Perú) share the same Common Intellectual Property Regime. Therefore, the decisions adopted by other members of the Andean Community are based on the same supranational legislations and can be used by the other members, but merely as a guide.
However, decisions from other fora/jurisdictions are not binding for other members of the Andean Region.
How does a court determine whether it has jurisdiction to hear a patent action?
Jurisdiction and competence are established by national law. As mentioned in question 1. Administrative Litigation judges are competent when there is a challenge to an administrative resolution that took effect. Civil judges are competent when actions are filed against a third party that has infringed the rights of the owner.
The court has jurisdiction to deal with foreign patent infringements only if they are registered in Ecuador.
What are the options for alternative dispute resolution (ADR) in patent cases? Are they commonly used? Are there any mandatory ADR provisions in patent cases?
Regarding alternative methods of conflict resolution in Intellectual Property disputes, there is the possibility that a dispute concludes with a friendly agreement between the parties, which will be approved by the Competent Authority.
What are the key procedural steps that must be satisfied before a patent action can be commenced? Are there any limitation periods for commencing an action?
To file a patent action, the administrative procedure must have been completed and the resolution granting the patent must be final.
The action for infringement of the patent may be presented in the period that the patent lasts.
Which parties have standing to bring a patent infringement action? Under which circumstances will a patent licensee have standing to bring an action?
Regarding the parties entitled to file an action for patent infringement, the owner of the patent will be the legitimate one, since he has the right to prevent third parties from using the patent without his authorization.
The licensee of a patent may be entitled to file a claim if it has been contractually established in that way.
Who has standing to bring an invalidity action against a patent? Is any particular connection to the patentee or patent required?
Those who demonstrate their legitimate interest can file an invalidity action.
Are interim injunctions available in patent litigation proceedings?
The interim injunctions are available in patent litigation proceedings.
The means to obtain the order of precautionary measures is through an administrative protection filed with the competent administrative authority, or through a precautionary action initiated before the civil judge.
In both cases it is important to demonstrate the possible infringement of the patent, with this proof the administrative or judicial authority will be able to grant preventive measures.
The process will continue until the effective existence of the offense is demonstrated, so that definitive precautionary measures are finally ordered.
What final remedies, both monetary and non-monetary, are available for patent infringement? Of these, which are most commonly sought and which are typically ordered?
As a first step, it is necessary to stop the infringement of the patent and consequently require compensation for the damages caused.
On what basis are damages for patent infringement calculated? Is it possible to obtain additional or exemplary damages?
Patent infringement damages are calculated based on loss of profit of the patent holder due to the infraction. These damages are calculated by an accountant expert paid by a party and his report is presented with the claim.
It is not possible to obtain additional or exemplary damages in Ecuador.
How readily are final injunctions granted in patent litigation proceedings?
Usually, if there is sufficient evidence to convince the judge or the administrative authority of the existence of the infringement of the patent, preventive precautionary measures are granted immediately.
The law allows the person requesting precautionary measures to be required to provide a surety until the process is resolved and definitive measures are ordered.
The mode of compensation when there is an order for final injunctions may be agreed by the parties, or, where appropriate, remain with the ordered measures.
After this injunctions process, the main action is initiated where compensation for the damages caused is required.
Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?
There are not provisions for obtaining declaratory relief, only mandatory by the judge.
What are the costs typically incurred by each party to patent litigation proceedings at first instance? What are the typical costs of an appeal at each appellate level?
Leaving aside the attorney´s fees, most of the costs correspond to the opinion of experts in the field, mainly those technical experts who can demonstrate that the patent was infringed and the accounting experts that can calculate the damage caused to the patent holder. Their fees range from US $800 to US $15,000, but it is entirely upon the party to select the experts and approve their fees.
Besides attorney´s and experts’ fees, there are no additional costs.
Can the successful party to a patent litigation action recover its costs?
Absolutely. Cost of a patent litigation in Ecuador are minimal, so if the patent infringement is proven and the judge orders that the damages caused be paid, the costs of litigation will be more than recovered. But if the patent holder is defeated, he will also lose the expenses incurred during the litigation.
Judges may even order that the defeated party pay the expenses incurred by the other party during the litigation, but this is unlikely and rarely happens.
In any case, the costs of a patent litigation in Ecuador are usually negligible compared to the damages caused by the infringement, which usually must be paid when the patent is infringed.
Settlement offers may include the payment of compensation by the party who infringed the patent, as well as the payment of legal costs.
There is no procedural mechanism either enabling or requiring security for costs.
What are the biggest patent litigation growth areas in your jurisdiction in terms of industry sector?
The fastest growing areas in patent litigation is the pharmaceutical sector. In recent years, favourable decisions have been obtained in patent lawsuits.
What do you predict will be the most contentious patent litigation issues in your jurisdiction over the next twelve months?
Issues related to pharmaceutical patents.
Which aspects of patent litigation, either substantive or procedural, are most in need of reform in your jurisdiction?
It is important that there are judges specialized in intellectual property, especially in patents, so to obtain quick, well-reasoned and effective results.
It is also important to reform certain norms that confuse the jurisdiction of the trials and the way of processing them.
What are the biggest challenges and opportunities confronting the international patent system?
In reference to the challenges faced by the international patent system is that in many cases the paperwork that revolves around the filing of a patent can cause the invested costs to be lost or cannot be followed. paying. It is important to remember that it is not always large companies that submit registration applications and, as them do not have the necessary funds, them decide not to submit the application or only submit it in their country of origin.
Regarding the opportunities in the international patent system, with the passing of time and advances in different areas, legislation can be harmonized so that each inventor may present the application for registration of their inventions, not only in their country of origin but they can present it in different countries.
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