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Enforcement through the courts

At trial What level of expertise can a patent owner expect from the courts? Administrative stage Mid to high-level expertise should be expected from the Institute of Intellectual Property.

Jurisdictional stage Low-level expertise should be expected from the District Court of Administrative Litigation.

Are cases decided by one judge, a panel of judges or a jury? The national director of industrial property of the Institute of Intellectual Property, or an appeal by the Intellectual Property Committee (three members), will decide the administrative stage.

The jurisdictional stage is decided by a panel of three judges.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury? Jury trials do not exist in Ecuador.

What role can and do expert witnesses play in proceedings? Expert witnesses can provide reports which help judges to resolve a case.

Reports are based on the questions or requests made by the parties involved in the case.

Does your jurisdiction apply a doctrine of equivalents and, if so, how? The first part of Article 148 of the Intellectual Property Law states that the “scope of protection conferred by the patent shall be determined in line with its claims”. However, the second part of the article determines that the “ description and drawings or plans and any other elements deposited at the National Industrial Property Direction shall serve to interpret the claims”. This means that description and drawings serve to interpret claims and, according to the doctrine of equivalents, would apply in Ecuador. However, there was an isolated resolution of the IP Office (2004) where an application to apply the doctrine of equivalents was denied – however, this case is not binding. Application of the doctrine of equivalents remains uncertain in Ecuador.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

It is possible to obtain preliminary injunctions in two ways:

  • when the demand contains proof of specific and consistent evidence to reasonably presume the actual or imminent violation of IP rights; and
  • when the violation of IP rights is proven, even presumptively, during inspections.

How are issues around infringement and validity treated in your jurisdiction? Although in Ecuador the practices of infringement and validity are treated separately, the action to attack the validity of a patent may suspend the infringement process.

Will courts consider decisions in cases involving similar issues from other jurisdictions? No, courts will not consider decisions in cases involving similar issues. In Ecuador, courts will consider decisions in cases involving similar issues from other jurisdictions if the litigants are the same. 

Damages and remedies Can the successful party obtain costs from the losing party? No. In order to obtain costs from the losing party another demand must be initiated. 

What are the typical remedies granted to a successful plaintiff? The losing party is prohibited from continuing with the violation of the IP rights. 

How are damages awards calculated? Are punitive damages available? This is at the discretion of the authority and may be between US$500 and US$100,000. 

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? If infringement is proven, it is usual to grant permanent injunctions.

Timescale and costs How long does it take to obtain a decision at first instance and is it possible to expedite this process? Two to three years should be expected in order to get a decision at first instance. 

How much should a litigant plan to pay to take a case through to a first-instance decision? The professional fees in a first-instance decision can be between US$15,000 and US$20,000.

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