At a glance: patent enforcement proceedings in Colombia

Patent enforcement proceedings

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

A patent holder may pursue civil or criminal actions either to stop or to prevent infringing acts. Before the Civil Procedure Law was reformed in 2012, there were no specialised civil courts. However, the procedure implemented in July 2012 provided the Superintendence of Industry and Commerce (SIC) with jurisdiction over infringement cases through an independent Judicial Division. The SIC is also where the Colombian Patent Office (CPO) resides. Civil actions may be pursued before the SIC (the preferred choice) or Civil Circuit Courts present in the larger cities. Criminal actions may be pursued before a specialised unit for intellectual property affairs (according to articles 306 and 307 of the Criminal Code); however, criminal infringement actions are extremely rare. If the infringer is a public servant or a government entity, the patent holder must file a lawsuit before the contentious administrative jurisdiction.

The SIC has become the principal venue to litigate infringements under the civil jurisdiction since it has proven to be very effective and reliable. However, according to its 2020 Annual Report, there was a 35 per cent annual decrease in complaints filed before the SIC (a total of 211 cases, including unfair competition, trademark and patent infringement cases compared to 322 complaints filed in 2019). This decrease may be related to the covid outbreak, given that the SIC was on hiatus from March to July 2020. The report pointed out that 203 IP proceedings were decided.

What is the format of a patent infringement trial?

Civil patent infringement trials can start with the filing of a request for preliminary injunctive relief, along with or before the filing of a complaint (injunctive relief can, however, be sought at any time during the process). It is possible to request and obtain preliminary injunctive relief without serving or hearing the counterpart. However, the SIC will typically serve notice on the defendant in most patent cases involving a preliminary injunction. Considering that invalidity cannot be contested during the infringement process, cases are typically settled once a preliminary injunction is issued.

Outside the complaint and reply, the procedure is mostly oral and follows these stages:

• preliminary injunction request (optional) and decision;
• filing of the complaint;
• admission and service of the complaint to the defendant;
• reply by the defendant;
• conciliation hearing, evidence gathering process and oral closing arguments;
• prejudicial interpretation of applicable Andean law before the Andean Court of Justice (ACJ) (the prejudicial interpretation is optional in a first instance stage; however, it will become mandatory during an appeal); and
• a final ruling.

A standard infringement case before the SIC may take anywhere between one and two years to reach a final ruling.

The following types of evidence are admissible:

• expert opinions and testimony provided by a party (which can be cross-examined);
• court-appointed expert opinions;
• site inspections; and
• requests for production of documents.

Affidavits are admissible, but the witness will most probably be ordered to provide oral testimony in order to provide the defendant with the opportunity to cross-examine and controvert its conclusions. Party experts may be local or foreign, academic or professional. They can also be employees, but the judge will naturally affect credibility due to bias.

In addition, Colombian procedural law provides ample discovery through pre-litigation discovery motions for site inspections, document production and depositions.

The parties may appeal an adverse decision from the SIC before the Bogota Superior Tribunal or from a Civil Circuit Court before a Superior Tribunal from the corresponding city where the complaint was filed.  An appeal can take one to two years.

Criminal trials are restricted to natural persons, are essentially accusatory and are almost completely oral in nature. However, criminal patent infringement cases are very rare; instead, they are typically used to pursue piracy or counterfeit cases.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof to demonstrate infringement for product claims lies on the plaintiff and the standard is clear and convincing. This burden may be reversed for method claims if the plaintiff can show: (1) the product obtained by means of the patented process is a new product, or (2) (a) a substantial likelihood that the process is being infringed and (b) reasonable steps were taken to determine if the infringement process was taking place.  If the reversal is triggered, the defendant must demonstrate that its accused method is different from the patented one.

Grounds for patent unenforceability must be proven by the defendant, based on a clear and convincing standard.

The burden of proof to demonstrate invalidity is carried by the party seeking to invalidate the patent, which must show the patent office erred when granting the patent, based on a clear and convincing standard.

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

Legal standing to sue for patent infringement cases is limited to: (1) any of the co-owners of the patent (individually and severally), unless otherwise agreed, or (2) under article 564 of the Commerce Code, the licensee, unless otherwise agreed and subject to prior notification to the patent owner.

Although extremely rare and not specifically contemplated under Colombian practice, whenever a patent infringement action has not yet been filed by the patent holder, a potential infringer may request a non-infringement declaration. Beyond a perceived threat (eg, a cease and desist letter, a warning letter to customers), there is no specific conduct that must be alleged or shown to have standing for such declaratory action. There may be some forum-shopping advantages for a potential defendant if there is a benefit to remove the case from the SIC to a civil court.

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

Colombian IP law (Andean Decision 486) does not specifically contemplate the figure of inducement or contributory infringement. There is likewise no case law on this point. However, article 238 of Decision 486 provides that a patent holder may seek protection against acts that present the imminence of infringement. Under a broad interpretation of 'imminence', a patentholder could argue that acts of inducement present a high risk of infringement and hence could be stopped.

Multiple-party infringement of a single claim is not specifically contemplated, nor is there case law on this point. However, as noted above, it is possible that a broad interpretation of article 238 may also allow the patent holder to pursue different actors that may be contributing in a concerted fashion to materialise the infringement.

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

The plaintiff may join various infringers in a single complaint, insofar as they have some responsibility in the infringing conducts (eg, offer for sale, sale, use, manufacture or importation) and the conducts are related to the violation of the same patent or patents.

To the best of our knowledge, there are two recent cases (2015 and 2019) where the plaintiffs filed patent infringement lawsuits against various companies comprising a joint venture that collectively used a patent-protected invention. The lawsuit and preliminary injunction request named all the companies as defendants. The lawsuits were successfully admitted by the SIC and a Civil Circuit Judge of Bogota.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Under the general territoriality rule applicable under Decision 486, the scope of patent protection is limited to acts taking place in Colombia, including importation. However, a Colombian court may also prevent the importation of a product resulting directly from a process patented in Colombia, even where such a process took place outside of Colombia.

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

Andean Decision 486 (IP law in Colombia) does not specifically contemplate the doctrine of equivalents. There is, likewise, no case law on the point; at best, a plaintiff may seek a broad interpretation of the terms in the claims. The patent specification, drawings and examples may be used to interpret the scope of the claims as granted. Additionally, prosecution history and closely related prior art could be used persuasively by the defendant to limit any such broad interpretation.

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Colombian procedural law provides pre-litigation evidence preservation mechanisms, such as preliminary injunctions seeking to preserve a given document or the lien of a given product or goods that may serve as evidence of any sort of conduct or fact. It is also possible to request pre-litigation discovery motions for site inspections, document production or depositions, witness testimonies or expert opinions. There are also broader evidence-gathering requests that can be made once a complaint is filed. Both pre-litigation and post-complaint evidence gathering may be requested outside Colombia and against third parties. Failure to comply in certain cases will allow the court to draw adverse inferences.

Pre-litigation evidence-gathering procedures may be requested by anyone who is a potential plaintiff or defendant in a future judicial proceeding. For patent infringement actions, the SIC also has jurisdiction over pre-litigation evidence motions and has become the principal venue for doing so since it has proven to be very effective and it is the specialist court for IP matters.

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

According to official statistics published by the Chief of the Jurisdictional Department at the SIC in 2014, a standard patent infringement case litigated before the SIC may take from five months to one year to reach a first-instance decision. A second-instance decision may take approximately two more years. Preliminary injunctions are available and may be obtained any time between two weeks and one month if it is requested before the SIC. A PI request may take from one to three months to reach a decision before civil circuit judges.

There are no updated statistics that are publicly available.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

The costs of prosecuting an infringement lawsuit vary depending on the complexity of the case and are normally invoiced on an hourly basis. Excluding the invalidity portion, in terms of an average case, it is reasonable to budget anywhere between US$50,000 and US$150,000 for a one-three-year period, covering pre-litigation and the first instance. Reaching a settlement could significantly reduce costs. For the second instance, it would be prudent to budget US$50,000 to US$100,000 over a one- to two-year period. The cost of an invalidity suit will vary greatly, depending on the amount of evidence that requires processing and on the complexity of the case. A prudent budget would range between US$75,000 and US$250,000 over a four-year period.

Contingency fees are permitted and also vary depending on the complexity of each case, and are generally in the range of 10 to 30 per cent of the amount of damages recovered. The National Bar prohibits contingency fees exceeding 50 per cent.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

The parties may appeal an adverse infringement decision from the SIC before the Bogota Superior Tribunal, while an adverse decision from a civil circuit judge may be appealed before a Superior Tribunal from the city where the complaint was filed. Infringement cases, by petition of a party, may eventually be selected to be heard by the Supreme Court. Invalidity suits are single-instance procedures before the Council of State and no appeals are available. This will change in 2022 due to a recent amendment to the Colombian Administrative Procedural Code.

A second-instance decision may take approximately one to two more years to obtain a final decision.

New evidence at second instance is allowed in Colombian Procedural Law in the following cases:

• when all parties agree on the request of new evidence;
• when such evidence was requested and accepted by the judge at first instance but, through no fault of the requesting party, the evidence was not presented;
• when it tends to prove facts that occurred after requesting said evidence at the proper opportunity during the first instance; and
• when it relates to documentary evidence that was not able to be provided at first instance because of unforeseen circumstances or force majeure.

In addition, the judge has the discretion to request any additional evidence considered useful to issue a final ruling.

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

IP rights are a legitimate exception to free-market rights. Patent rights, however, are not absolute rights and are limited to the scope of the claims as granted. In that sense, for example, making an unduly broad interpretation of the granted claims could be interpreted by the defendant as an abuse of IP rights, providing an alleged infringer with legal standing to seek relief relying on unfair competition arguments. From an antitrust perspective, if the patent holder has a dominant position in a relevant market, an abusive exercise of its patent rights could be taken as an abuse of dominant position. To the best of our knowledge, neither the courts nor the antitrust authorities have issued a decision on this issue. However, on 11 December 2020, the Andean Court of Justice issued a Prejudicial Interpretation (02-IP-2019) in an Ecuadorian case that develops sham litigation using patent infringement preliminary injunctions as a basis for an antitrust violation.

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Disputes regarding patent infringement or patent unenforceability may be resolved by conciliation or arbitration. However, invalidity issues are, for the time being, not considered by the Colombian arbitration bar as subject of local ADR mechanisms because they are considered exclusive subject matter for the Council of State (Supreme Court for administrative matters). There is ample discussion surrounding this topic and a more flexible approach is being studied by the arbitration bar. However, until this happens, arbitration is not seen as a viable option to resolve a patent dispute where invalidity issues are under discussion.

Law stated date

Give the date on which the information above is accurate.

19 March 2021.