Patent enforcement proceedings

Lawsuits and courts

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?

Honduran law establishes two different types of proceedings to enforce patent rights against an infringer: civil and criminal claims. Both types of proceedings seek to stop the infringement and to compensate for damage caused to the patent holder. Each action is brought depending on the nature of the facts, circumstances and the desired results.

 

Civil claims

The holder of a patent has a cause of action against any party that infringes its patent rights. The patent holder may request the following:

  • an order requiring the defendant to cease the infringement;
  • revindication to retrieve the right of an application in process, as well as the title or registration granted to the defendant;
  • compensation for damages;
  • garnishment of infringing objects or any other means with which the infringement is being caused;
  • the attribution of ownership of the seized objects or means, if possible (in which case, the value of the affected goods will be imputed to the amount of compensation for damages, and if it exceeds the amount of compensation granted, the patent owner must compensate the other party for the excess); and
  • any effective measure necessary to prevent the infringement from continuing or repeating itself, such as the destruction of the means employed to infringe.

 

Any interested party may file a claim against the owner of an IP right, seeking a declaration from a competent judge declaring that a particular action does not constitute a violation of that patent.

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

Importantly, before proceeding with the submission of a civil claim, a ‘conciliation stage’ must first be exhausted, according to article 525, number 3, of the Honduran Civil Procedure Code.

 

Criminal claims

According to Honduran law, a criminal complaint may be filed by the patent owner on the grounds of a violation of IP rights.

Patent holders seek the conviction of infringers of this criminal offence to protect themselves against anyone within Honduras who manufactures, elaborates, commercialises, offers to sell or circulates items that by name, brand, packaging, presentation or appearance may be confused with similar patented products registered in the name of another person. Based on articles 248 and 249 of the Criminal Code, the infringing party could be sentenced to imprisonment for three to six years, plus fined 50,000 to 100,000 lempiras (approximately US$4,090).

Trial format and timing

What is the format of a patent infringement trial?

In civil cases, the complaint is filed in writing. The freedom to produce evidence is a principle embedded in Honduran 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 the evidence must be reasonably reliable. More specifically, for patent infringement cases, courts rely heavily, among other things, on seized products, test results, expert reports, documents, affidavits and live testimony.

Cross-examination is permitted, pursuant to article 251, subsection a, of the Civil Procedure Code. Such evidence is, however, limited to previously approved written questions and no redirect or re-examination is allowed. Expert witness reports are commonly used in this type of proceeding. All disputed issues in all trials are decided by a judge. A trial may take between one to five years, exhausting all instances, assuming a normal development.

Criminal cases may last more than two years, starting with the filling of a criminal violation report before the Prosecutor’s Office. After the report is submitted, a criminal investigation is conducted by the assigned prosecutor. The legal representative of the offended party may assist the prosecutor in obtaining evidence. Once the prosecutor has all the evidence to bring action against the accused, they can then begin with each phase, starting with the first hearing (where the accused is presented with the preliminary investigation proceedings before the judge), the intermediate phase of the preliminary hearing, and the final phase, finishing with the oral and public trial (articles 265 and 266 of the Criminal Procedure Code).

Proof requirements

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. In Honduras, the burden of proof rests on the owner of the patent. Conversely, the infringer has the burden of proving the facts that dismiss plaintiff´s allegations. The burden of proof is shifted 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 the product is new, applying article 34 from the TRIPS Agreement. The judge or the court must keep in mind the availability and ease of proof that corresponds to each of the parties in the dispute.

Standing to sue

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?

The following parties may sue for patent infringement:

  • the owner of the patent;
  • a co-owner with the same rights as the owner of the patent, with unless otherwise agreed; and
  • a holder of an exclusive licence.

 

In addition, a holder of non-exclusive licence of a patent may notify patent holder to file a judicial claim for infringement. If the owner of the patent refuses or fails to file the appropriate claim within a period of three months, the non-exclusive licensee may file the claim in his or her own name, requesting the necessary precautionary measures to protect the petitioner, pursuant to article 524 of the Civil Procedure Code.

In criminal proceedings, the accused party will be given the opportunity to provide evidence showing that no infringement has occurred, despite the obligation on the Prosecutor’s Office to rebut the presumption of innocence of the accused party.

In civil proceedings, the defendant would be given the opportunity to submit evidence to overcome the plaintiff’s infringement claims.

Inducement, and contributory and multiple party 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 Act of Honduras does not specifically provide for liability for inducement, contributory or multiple party infringement. The law does establish, however, that the patent holder may pursue action against any person that directly infringes the patent within Honduran jurisdiction. There is no limitation on the degree of responsibility. It follows that, because any person that infringes a patent may be sued by the patent holder, he or she who is directly involved, even regarding one patented step, would likely be found guilty.

Regarding criminal liability, the Criminal Code establishes that criminal responsibility is found against all persons who are involved in committing a crime: those involved individually, and those acting in association with others, such as mediators, instigators or accomplices. Therefore, any person found liable will be sentenced according to the degree of their wrongful actions and participation.

Joinder of multiple defendants

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, any facts related to 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 the involvement in an infringing activity. Under Honduran law, both for civil and criminal cases, specific procedural law provisions allow for various plaintiffs or defendants to join in the same proceeding, as long as the proceeding examines the same facts at issue, claims and interests. Not all infringers must be accused or sued in order to comply with the requirements of standing to sue.

Infringement by foreign activities

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

Infringement must occur inside the jurisdiction of Honduras to 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 “component”’ (35 USC, section 271(f )(1)). In Honduras, no statutory provision establishes that activities that take place outside the jurisdiction may support a claim of patent infringement.

Infringement by equivalents

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

There are no judicial rulings or statutory provisions governing the scope of the doctrine of equivalents. 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 the actions to amount to an actual infringement..

Discovery of evidence

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

The judge can grant a seizure warrant of property and objects that may serve as evidence of the infringement or crime. The judge can also grant a warrant ordering a party to cease infringement. Injunctions customised to specific needs to effectively tackle an infringement are also available, and evidence from outside the country for proving infringement, damages or invalidity of the patent is also accepted.

Further, based on article 246 from the Civil Procedure Code, a special sworn declaration proceeding is available, provided that reasons of urgency or fear are shown. Its admission will depend on the type and kind of infraction. The special sworn declaration must be rendered by the potential defendant on an urgent basis, before the plaintiff brings an infringement suit against the infringer.

Litigation timetable

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

  1. The initial stage: The proceedings are initiated with the submission of a written complaint. The defendant is then summoned to answer within 30 days.
  2. The conciliatory phase: Following the formal response to the claim, there is a preliminary hearing where the parties will have to appear. In that hearing, the parties will be given the opportunity to reach a settlement or voluntarily amend procedural errors.
  3. The confirmation: If parties are unable to reach a settlement, they will be given the opportunity to propose and provide evidence. Stages 1, 2 and 3 may take up to a year and a half.
  4. The evidentiary hearing: In that hearing, witnesses and experts are summoned to appear before the court. During this hearing, parties are able to object to the participation of a specific expert witness. Stage 4 may take up to one year.
  5. Final arguments and first instance ruling: After the evidentiary hearing concludes, the parties are summoned to provide final arguments. Afterwards, a first instance ruling is issued. Parties will have 10 days to file an appeal and this period is not extendable. Stage 5 may take up to two years.

 

The whole process may take two to five years.

Litigation costs

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 depend on the nature of the infringement, the technology of the patent and the type of evidence to prove the infringement claim, as well as the expert witnesses’ fees. The range of the costs are between US$4,000 to US$20,000.00 up to first instance. Additional fees must be considered for preparing appeals and other types of remedies or extraordinary injunctions.

Honduras Law does not have specific provide for contingency fees. Attorney’ fees are agreed with the client, without charging any additional expenses not previously agreed on.

Court appeals

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

In civil matters the available avenue of appeal is an appeal filed before the appellate court. Ultimately, a cassation recourse may also be brought against the Court of Appeals’ ruling or judgment. In criminal matters, an appeal is available against the intermediate stage resolution or decision, while in the final oral stage trial, a cassation recourse against a ruling may also be brought. For both proceedings, civil and criminal, evidence may only be submitted during the trial proceedings in the first instance.

Competition considerations

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?

Unless a patent holder shows that there is no exhaustion of rights in any type of infringement case, a patent holder could be liable to pay damages and attorneys’ fees.

Competition considerations arise in cases of compulsory licence requests where semiconductor technologies are involved, provided that there is an anticompetitive conduct underlining the lack of exploitation of the patent.

Furthermore, while Honduran Competition Law addresses issues involving acts that may expose the patent owner to liability when enforcing the patent, the Industrial Property Act is the specific law governing patents. According to the Industrial Property Law, any person or competent authority may request the Patent and Trademark Office to revoke a patent, if the patent owner engages in any of the following conduct, among others, which would be deemed to amount to a case of abuse exercise of rights pertaining to a patent:

  • acts seeking to control, restrict or suppress industrial or commercial activities, in such a way that affects the national economy;
  • unjustified or abusive conditions imposed for the granting of a licence or a sublicence, seeking to unduly hinder or affect the establishment or growth of new businesses, as well as industrial or commercial activities, in Honduras;
  • offering for sale products protected by a patent at unreasonably high prices, thereby amounting to an abuse of the rights conferred by the patent; and
  • use of the patent to the extent that it would unjustifiably hinder, restrict or control an industrial or commercial activity related to products or processes not protected by the granted patent.

 

A request to grant a compulsory licence should have been previously submitted and granted. Further, the granting of a compulsory licence must not be sufficient remedy for the purposes of ceasing the unlawful effects caused by the abusive acts. After exhausting such proceedings, the patent rights can be revoked by the Patent and Trademark Office.

Alternative dispute resolution

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

Voluntary mediation and arbitration proceedings are available. Valid arbitration clauses are binding. Regarding civil proceedings, a complaint will not be admitted if it is not accompanied by a certification from the director of the Registry of Industrial Property, recording the parties could not reach an agreement to avoid court proceedings during the conciliation stage. If the parties reach an agreement, the case is settled and therefore terminated.

In criminal proceedings, depending on the facts, a settlement agreement may be entered into before the accusation against the infringers is made by the prosecutor, provided that the terms of the agreement in question are accepted by the prosecutor.

Law stated date

Correct on

Give the date on which the information above is accurate.

March 2021.