At a glance: patent enforcement proceedings in El Salvador

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?

There are two types of proceedings that may be pursued when enforcing patent rights: civil and criminal actions. Each action is brought depending on the nature of the facts and circumstances and depending on the results that are desired.

Pursuant to civil subject matter claims, the holder of a patent has a cause of action against any third party that infringes upon the rights conferred therein. The patent holder may request:

• the ceasing or suspension of the infringement;
• compensation for damages;
• garnishment of infringing objects or any other means with which the infringement is being caused;
• seizure of goods or any other property with which the infringement is being caused;
• any effective measure necessary to avoid the infringement from continuing or repeating itself;
• the destruction of the means employed to infringe; and
• the publication of a declaratory judgment and its notification to the interested parties, at the cost of the infringer.

Regarding criminal claims, the law provides that a criminal complaint may be filed by the holder of a patent for the crime of violation of invention privileges (article 228 of the Criminal Code). The conviction of infringers for this crime is sought by patent holders to protect themselves against third-party unauthorised use, manufacture, import or commercial offering of the patent with commercial or industrial purposes.

There are no specialised courts. These proceedings are brought before the civil or the ordinary criminal courts.

What is the format of a patent infringement trial?

In civil cases, the complaint is filed in writing. The freedom to produce evidence, as a matter of principle, is embedded in El Salvador’s law. All means of evidence must be relevant, legal and pertinent for it to be granted legal value and weighed by the court, and the source of such evidence must be reasonably reliable. Therefore, on the basis of this freedom to produce evidence, that which is brought before the court will necessarily depend on the facts and circumstances of the case. More specifically, for patent infringement cases, practitioners rely heavily on expert opinions, seized product test results and judicial inspections at the place of manufacturing or at the defendant’s offices, among others which further improve the results of the foregoing.

The trial may take about eight months from the moment the patent holder brings suit. The appellate phase may take an additional six months, and the appeal on infringements of the law usually takes up to 10 months.

On the other hand, criminal cases may last up to one year, with the ordinary appeal and the appeal on infringements of the law taking another six months each. Importantly, preliminary injunctions prior to commencement of the case or upon filing suit may be determinant in achieving effective seizure or garnishment of goods.

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

The general rule is that the burden of proof lies with the accusing party or complainant. For patent matters, however, the law shifts the burden of proof to the defendant, in cases where a product is manufactured by a patented method without the authorisation of the patent holder, in which case the defendant must prove with reasonable means that the product was not substantially manufactured on the basis of such a method, and provided that such product is new. Furthermore, article 34 of the TRIPS Agreement is also applied in a consistent manner with local law.

As to the validity of a patent, the law establishes the presumption that unless proven to the contrary a patent shall remain in force for enforcement purposes. In this case, should the validity of the patent be questioned by the defendant, the court would have to issue judgment on this issue prior to all other issues.

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?

Patentees with the exclusive rights to their inventions have standing against infringers. Co-owners consequently may also bring suit without the consent of all other owners, unless agreed otherwise. In addition, exclusive licensees with a registered licence or any licensee with a compulsory or public interest licence may bring suit against any third party that impinges upon the rights granted in the licence. If the licensee does not have sufficient powers to pursue an action by itself, the licensee must show that, after appropriate request, the patent holder failed to take action within one month, in which case the licensee has the right to temporarily request preliminary injunctions, without prejudice of the right of the patent holder to appear in the proceedings at any later time.

As indicated above, because of the legal presumption that a patent is valid until proven otherwise, a defendant is entitled to use as a defence the invalidity of a patent, which would be, in principle, the first issue to be decided for an infringement case; this, however, does not exclude the possibility that, while an infringement trial is being held, an infringer may attempt to file a separate nullification action to request a declaratory judgment. Pursuant to the common proceeding provided in article 276 of the Civil Procedural Code, the likely outcome of this strategy would, however, result in the accumulation of both proceedings (because of the identity of parties, object of the claim and an issue that must be considered prior to the finding of infringement).

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?

The intellectual property law does not specifically establish inducement, contributory and multiple party infringement figures; the law provides that the patent holder may pursue an action against any person that without the patent holder’s authorisation uses, manufactures, imports or commercially offers it with commercial or industrial purposes. Therefore, there is no limitation nor requisite whereby the degree of responsibility is set forth beforehand. It follows that because any person that infringes a patent may be sued by the patent holder, multiple persons may be found liable, albeit in different degrees depending on their participation: one or two may have an active position with regards to the principal acts that constitute the infringement, while others may have a secondary position in that their degree of contribution is less significant, but nevertheless is necessary in the process that constitutes the infringement.

On the other hand, with respect to criminal liability, the Criminal Code establishes that it is indeed found against all persons who are involved in committing a crime: those involved individually, in association with others, as mediators, instigators or accomplices. Therefore, any person found liable will be sentenced according to the degree of their wrongful doings and participation.

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?

Yes, as indicated before all facts related to an infringement that involves more than one person will give rise to a cause of action in favour of the patent holder, regardless of the fact that the law does not specifically regulate inducement and contributory infringement as such. The relevant issue is that any person involved in the infringing activity would be held liable; this cause of action against a legal entity would differ in that it would be the legal entity held liable, and liability regarding directors and managers would be a separate issue of corporate affairs. Under El Salvador's law, both in civil and criminal cases there is a procedural instrument by which various plaintiffs or defendants are joined or accumulated in the same proceeding when it regards the same facts and claims.

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

Salvadorean law adopts the territoriality principle: only activities that take place inside the jurisdiction support a claim of patent infringement. There is no exception, for example, as provided in the United States, where infringement occurs when a party ‘supplies . . . from the United States, for “combination” abroad, a patented invention’s “components”’ (35 USC, section 271(f)(1)).

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

Currently, there are no judicial decisions governing the scope of equivalents. Furthermore, the law does not provide any statutory provisions governing the scope; rather, the legal analysis is determined by the claims, construing the description of the invention and the specification of claim annexed to them, including drawings. In any case, the party claiming infringement by equivalents in a trial must produce evidence to prove the infringement, and the extent to which the ‘equivalents’ of the claimed subject matter could be shown to embody the invention’s essence and thereby attain the same kind of result as was reached by his or her invention.

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

There are several mechanisms by which documents may be obtained, namely to compel third parties to appear before the court with confidential documents or any other proprietary information; the issuance of a search warrant by a court to seize goods or any other object that may be regarded as evidence; and the issuance of specific injunctions customised to the specific needs to effectively tackle an infringement.

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

The trial may take about eight months from the moment the patent holder brings suit. The appellate phase may take an additional six months, and the appeal on infringements of the law usually takes up to 10 months.

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

Because of the lack of specialised IP courts and the actual backlog of cases, the cost of a patent infringement lawsuit before and during trial as well as for an appeal ranges from at least US$5,000 to as much as US$20,000, plus other fees (eg, expert witness fees). While contingency fees are permitted, such types of agreements are not usual in El Salvador for these kinds of matters.

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

It is possible to file an appeal before the Civil Chamber and an appeal on infringement of the law before the Supreme Court. Evidence may only be submitted during the trial proceedings in the first instance, unless specific evidence arises or access is only available afterwards, or if it was not allowed by the district court and it was then objected, in which case the court of appeals may accept receiving evidence that it considers necessary to reach its decision.

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?

The patent owner has only the rights granted by the law to prevent third parties from exploiting the patented invention without prejudice to the limitations provided for in the law. Nonetheless, in some cases the patent owner may be liable for abuse of the patent rights, and may be liable for competition violations, namely anticompetitive conduct exercised by the patent holder, and attempts to monopolise conduct. The acts committed by the potential infringer, if qualified as acts considered to be acts of abuse of dominant position, unfair competition and generating or establishing a monopoly based on the ownership of the patent, are sanctionable actions according to Salvadorean competition law.

In those cases, Salvadorean law states that the owner of the patent cannot perform anticompetitive or unfair competition behaviour against other competitors based on the ownership of a patent. The following acts must happen in order for the holder of the patent to infringe the law:

• the patent holder generates entry barriers against their direct competitors;
• the anticompetitive action is intended to limit or prevent competition within the market; and
• the holder lowers prices (if they are consumer products), and that those prices are below costs in order to eliminate direct competitors.

With the above, it is concluded that, once the aforementioned conduct occurs, the owner of a patent will be responsible for some type of infringement of the competition rules. Last but not least, the outcome of such cases may vary on a case-by-case basis, considering that for many cases there may be no substitute products directly competing with patent-protected goods.

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

If settlement is reached through conciliation or mediation, it is perfectly valid, with the exception that if one of the parties does not comply with its obligations, it may bring civil action to the infringing party.

In addition, the breach of a conciliatory agreement in accordance with article 557 of the Code of Civil and Commercial Procedure confers the right to initiate a forced execution of the agreement in case of a breach by the parties involved.

Law stated date

Give the date on which the information above is accurate.

March 2021.