At a glance: patent enforcement proceedings in Guatemala

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?

Guatemalan law establishes two different types of proceedings through which a suit may be brought in order to enforce patent rights against an infringer: civil and criminal claims. Both types of proceedings intend to stop the infringement and to compensate the damages caused to the patent holder. Each action is brought depending on the nature of the facts and circumstances, and depending on the desired results.

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 prevent the infringement from continuing or repeating itself;
• the destruction of the means employed to infringe; and
• an order forcing the infringing party to disclose all information it holds about any person participating in any aspect of the infringement and the means of production or distribution circuits of the infringing products or services, including the identification of third parties participating in its production and distribution and its distribution circuits, delivering this information to the owner of the right.

The judicial authorities will be empowered to impose sanctions, when appropriate, on a party that fails to comply with the valid orders issued by the authority.

Regarding criminal claims, the law provides that a criminal complaint may be filed by the patent owner on the grounds of a violation of intellectual property rights. The conviction of infringers for this crime is sought by patent holders to protect themselves against anyone within Guatemalan jurisdiction who produces, elaborates, commercialises, offers to sell, circulates, holds in stock or displays products protected by the patent; the claim may also be filed against any person who uses the patented process or executes any of the acts previously described to obtain a product as a result of the patented process.

There are no specialised courts. These proceedings are brought before the civil court or the ordinary criminal courts, or file a report of a criminal violation before the Prosecutor’s Office.

What is the format of a patent infringement trial?

The freedom to produce evidence, as a matter of principle, is embedded in Guatemala’s law.

In civil cases, the complaint is filed in writing. All 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 seized product test results; judicial inspections at the place of manufacturing or business; expert reports; and documents that serve as conclusive evidence among others that further improve the results of the foregoing.

The trial may take about two to four years from the moment the patent holder sues. The appellate phase may take an additional six months. Extraordinary constitutional injunctions would normally entail more than 10 months.

Criminal cases may last more than two years; the ordinary appeal would take between six and eight months, and the appeal on infringements of the law 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, depending on its nature and whether time is of the essence.

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. If the patent is a product, the plaintiff is obliged to provide sufficient evidence for a finding of infringement (eg, unauthorised sales, offering or use; and unauthorised imports or storage of the goods for the purposes of unauthorised sales, offering or use). The burden of proof shifts, however, if the enforced subject matter of the patent is a process as per the application of article 34 of the TRIPS Agreement: if the subject matter of the enforced patent is a process for obtaining a product, this treaty provision applies. In this case, the defendant must prove with reasonable means that the product was not substantially manufactured with such a process and such product must be new.

In criminal proceedings, during the investigation phase, all evidence must be obtained under the direction and coordination of the Prosecutor’s Office. In case of disagreement with the Prosecutor’s Office regarding the acceptance or denial of evidence, the patent owner may ask the judge to admit the evidence that was denied. To that effect, the patent holder is required to file a writ asking the judge in charge of controlling the investigation to take note that the patent holder will act as a complainant party during the criminal proceedings, which includes the investigation phase.

Regarding the burden of proof in an invalidity claim of a patent, any third party may seek the nullification of the patent on the grounds that it is not eligible subject matter or that the invention does not meet the novelty, non-obviousness and capability of industrial application requirements (consistent with article 27 of the TRIPS Agreement). Therefore, unless a competent court declares a patent void or a third party raises an invalidity claim defence within an infringement lawsuit, a patent will be deemed valid.

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?

A patent holder or the exclusive licensee have standing against infringers. Co-owners may also bring suit in accordance with the laws of co-ownership: co-owners representing two-thirds may pursue any act of disposition regarding the patent rights.

An accused infringer may file a lawsuit seeking to obtain a declaration that the enforced patent is invalid or void. Because a patent is valid until proven void, a defendant is entitled to raise an invalidity claim defence, 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 held, an infringer simultaneously attempts to file a separate nullification action to request a declaratory judgment. Pursuant to the common proceeding provided in 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?

Guatemala’s Industrial Property Law does not specifically establish inducement, contributory or multiple party infringement figures; the law provides that the patent holder may pursue action against any person that infringes the patent within Guatemala’s jurisdiction. 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. Thus, the degree of participation of each one is deemed necessary to the extent that the infringement is only possible because together they practise all the elements (or steps) of a patent claim.

At the same time, with respect to criminal liability, the Criminal Code establishes that criminal responsibility 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. Furthermore, the ‘attempt’ of committing a patent infringement crime may also be punishable according to the Guatemalan Criminal Code.

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 above, all facts related with an infringement that involve more than one person will give rise to a cause of action in favour of the patent holder, although 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 Guatemala’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?

The actual infringement must occur within the jurisdiction of Guatemala for a finding of patent infringement. Unlike 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)), in Guatemala no statutory provision establishes that activities that take place outside the jurisdiction may support a charge of patent infringement.

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

There are no statutory provisions or judicial decisions governing the scope of equivalents of a patent claim, nor are there judicial decisions establishing an enforceable doctrine of equivalents. The infringement by equivalents, if any, should be persuasively argued at trial so as to demonstrate that the patent right in question is the same in kind and effected to be the same in substance for it to amount to an actual infringement.

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, both in civil and criminal cases, 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 regard as evidence; issuance of specific injunctions customised to the specific needs to effectively tackle an infringement; and evidence from abroad.

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

The trial may take about two to four years from the moment the patent holder sues. The appellate phase may take an additional six months. Extraordinary constitutional injunctions would normally entail more than 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?

The costs entailed depend on the nature of the infringement, the technology of the patent and the type of evidence sufficient to prove the infringement claim, including expert witnesses fees. Such costs range from at least US$5,000 to as much as US$30,000, in addition to fees for preparing appeals and other types of remedies or extraordinary injunctions.

Contingency fee agreements are not specifically regulated under Guatemalan law. In case such an agreement is considered a quota litis agreement, it could be deemed unethical under the Code of Ethics of the Bar.

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

The available avenue of appeal is an appeal to be filed before the Appellate 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 was then objected, in which case the court of appeals may agree to receive 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?

Guatemala does not have an antitrust or competition law enacted. Nonetheless, there is a constitutional prohibition against monopolies and on that basis the Industrial Property Law construes two very significant provisions:

• clauses of a voluntary licence will be considered void if the purpose or effect of such clauses would amount to an undue restriction of competition, or if such clauses would entail an abuse of the exercise of the patent rights; and
• to remedy anticompetitive practices or conduct by virtue of which the Patent and Trademark Office may impose on the patent holder a compulsory licence.

Further, the Guatemalan legal system imposes on the patent owner the obligation to exercise the rights over the granted patent de bona fide; a patent owner may be liable for exercising the rights over the granted patent in excess and abuse of right.

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 civil proceedings, the law mandates a first hearing consisting of a ‘conciliation phase’, where the judge attempts to reconcile the parties. If the parties reach an agreement, the case is settled and therefore terminated. In criminal proceedings, depending on the facts, an alternative resolution may be reached before the accusation against the infringers is made by the prosecutor, and provided that the terms of the agreement in question are accepted by the prosecutor.

Law stated date

Give the date on which the information above is accurate.

March 2021.