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Applying for a patent
Patentability What are the criteria for patentability in your jurisdiction? In Ecuador a patent will be granted to all inventions, whether products or processes, in all fields of technology, if the invention:
- is new;
- involves an inventive level; and
- is susceptible to industrial application.
An invention is new when:
- it is not in the prior art (technical status);
- it has inventive level that is not obvious, or obviously derived from prior art, to a person skilled in the relevant technical field; and
- it is considered to have industrial application where its subject matter may be produced or used in any productive activity, including services.
What are the limits on patentability? In Ecuador the limits on patentability are:
- things that are not considered to be inventions according to Article 125 of the Intellectual Property Law; and
- exclusions on patentability according to Article 126 of the law.
Article 125 states that the following should not be considered inventions:
- scientific discoveries, principles, theories and mathematical methods;
- materials which already exist in nature;
- literary and artistic works or any other aesthetic creation;
- plans, rules and methods for the exercise of intellectual activities for games or economical and commercial activities, as well as computer programs or logical supports where they are not a part of an invention susceptible to industrial application; and
- methods of presenting information.
Article 126 states that the following should be expressly excluded from patentability:
Inventions by which commercial exploitation must be prevented to protect public order or morality, including:
- the protection of life or health of persons and animals;
- the preservation of plant varieties; and
- the avoidance of serious damage to the environment or ecosystem.
The following are considered to be contrary to morality and are therefore not patentable:
- cloning processes for human beings;
- the human body and its genetic identity;
- the use of human embryos for industrial or commercial purposes;
- the procedures for the modification of the genetic identity of animals when they cause pain without obtaining any substantial medical benefit for human beings or animals;
- diagnostic, therapeutic and surgical methods for the treatment of humans or animals; and
- plants and animal breeds, as well as essentially biologic processes for the production of plants or animals.
To what extent can inventions covering software be patented? According to Articles 8 and 28 of the Intellectual Property Law, computer programs are protected as intellectual works under copyright. However, if the computer program or software is part of an industrially applicable invention, the software will be protected as a patent invention.
To what extent can inventions covering business methods be patented? According to Article 125(d) of the Intellectual Property Law, business methods are not patentable because they are not considered inventions. Article 125(b) establishes that plans, rules and methods for the exercise of intellectual activities, games or economical and commercial activities, as well as computer programs or logical supports where they are not a part of an invention susceptible to industrial application, are not considered inventions.
To what extent can inventions relating to stem cells be patented? Inventions relating to stem cells are not patentable because of the prohibition established in Articles 126(a) and (b) of the Intellectual Property Law.
Article 126 states that inventions by which commercial exploitation must be prevented to protect public order or morality – including the protection of life or health of persons and animals or to preserve plant varieties and to avoid serious damage to the environment or ecosystem – are expressly excluded from patentability.
For these purposes, the following are considered contrary to morals and are hence not patentable:
- cloning procedures for human beings;
- the human body and its genetic identity;
- the use of human embryos for industrial or commercial purposes; and
- procedures for the modification of the genetic identity of animals when they cause pain without obtaining substantial medical benefit for human beings or animals.
Are there restrictions on any other kinds of invention? There are no other kinds of restriction on any other inventions, other than those contained in Articles 125 and 126 of the Intellectual Property Law (detailed in the limits on patentability), in concordance with Articles 15 and 20 of the Andean Community Code, Decision 486.
Grace period Does your jurisdiction have a grace period? If so, how does it work? Article 122 of the Intellectual Property Law determines that disclosure will not be considered for any of the contents of a patent application during the year before the application filing date in Ecuador or another Andean member country, or during the year before the date of priority, if claimed, providing that the disclosure was attributable to:
- the inventor or the inventor’s assignee;
- a competent national office that publishes the contents of a patent application filed by the inventor or the inventor’s assignee in contravention of the applicable provision;
- a third party, including public officials or agencies, which obtained the information directly or indirectly from the inventor or the inventor’s assignee;
- an order from an authority;
- evident abuse to the applicant or the applicant’s assignee;
- the fact that the applicant’s assignee has displayed the invention at officially recognised exhibitions or fairs, or where for academic or research purposes it has been necessary to make it public to continue development (in such a case, the individual concerned should, when submitting his or her application, issue a statement that the invention has been shown with a certificate).
Oppositions What types of patent opposition procedure are available in your jurisdiction? An extract of the application should be published in the Gazette of Intellectual Property.
Within 60 days of publication, whoever has a legitimate interest can file an opposition against the patentability of the invention. If an opposition is filed, the National Office must notify the applicant to respond to the opposition within 60 days of notification. Within six months of publication in the Gazette of Intellectual Property, the applicant must request a patentability examination from the Patent Office to determine if the invention is patentable.
Apart from oppositions, are there any other ways to challenge a patent outside the courts? Administrative action to nullify the registration of a patent is possible through review and before 10 years have lapsed from the date of the patent’s concession.
How can patent office decisions be appealed in your jurisdiction? The decisions of the Institute of Intellectual Property can be appealed in two ways:
- reconsideration before the same official who issued the resolution (at first instance, this is the national director of industrial property of the Institute of Intellectual Property); and
- administrative appeal before the intellectual property committee of the Institute of Intellectual Property.
- the competency for the knowledge of controversies regarding this subject will fall, in the first instance, to the District Court of Administrative Litigation and, in the second instance, to the National Court of Justice (Supreme Court).
Timescale and costs How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for? An applicant should expect to wait approximately six to eight years before being granted a patent. In order to apply, the applicant must pay a government fee of US$2,816.13 for a patent with 10 claims, with a fee of US$130.61 for each additional claim beyond 10.
The following annuities must be paid:
For the examination before the concession of a patent, the applicant must pay US$1,510.40 for a patent with specifications of 20 pages, with a 10% additional fee for each further page.
These costs do not include professional fees or any other cost that the Institute of Intellectual Property may request.
Enforcement through the courts
Strategy What are the most effective ways for a patent owner to enforce its rights in your jurisdiction? The most effective way for a patent owner to enforce its rights in Ecuador is with the administrative protection of industrial property rights. With this protection, a patent owner can request the following:
- information; and
- a penalty for the violation of IP rights.
In case of violation of IP rights, a plaintiff should file a demand on the following terms:
- ending the acts of violation;
- the final seizure of the products or other objects involved in the transgression;
- the final withdrawal from commercial channels of merchandise involved in the transgression, as well as its destruction;
- the final seizure of the apparatus and means employed to commit the transgression;
- the final seizure of the apparatus and means to store copies;
- compensation for damages and torts;
- repair in any other form, of the effects generated by the violation of the legal right; and
- the total amount of the legal processing costs.
What scope is there for forum selection? There is no scope for forum selection.
Pre-trial What are the stages in the litigation process leading up to a full trial? Once administrative protection of IP rights has been requested or once a demand has been filed in the jurisdictional stage, a full trial is in process.
How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? It is not convenient for the defendants to delay proceedings because, in line with the administrative protection of industrial property rights, the authority can issue injunctive relief, which includes the seizure and deposit of merchandise and other objects violating IP rights.
How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it? There is the option to file for reconsideration in order to nullify the registration of a patent. This reconsideration can be filed in the following cases:
- if the subject of the patent does not constitute an invention, according to the Intellectual Property Law;
- if the patent was granted for a non-patentable invention;
- if the patent was granted in favour of someone who is not the inventor;
- if before the date of presentation of the application for concession of the patent or claimed priority, a third party, in good faith, was in the country of manufacture or using the processes for commercial purposes or made serious preparations to continue manufacturing or use for such purposes; and
- if the patent was granted in violation of any other law or was obtained on the basis of false or erroneous data, information or description.
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.
Appeal Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take? Any party should have the right to appeal a resolution if the party feels that the resolution is unfair or violates a law.
Options away from court Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts? Arbitration in intellectual property is not available in Ecuador; however, parties can mediate to settle the case outside the courts.