Applicable Law
|
· I · Intellectual Property Law, enacted May 19, 1998; |
Applicants
An application may be filed by the inventor or his assignee, whether a natural or artificial person. When several people created the invention jointly, they hold the patent right in common. Inventions created by employees under contract belong to the employer. In Ecuador, the patent right belongs to the first applicant.
Patentable subject matter
Patents shall be granted for any invention, being of products or procedures, in all fields of technology, providing that it is novel, non-obvious (inventive level) and has some industrial application.
What is not patentable
- The following items shall not be considered as inventions:
- Discoveries, scientific theories, mathematical methods;
- Materials already existing in nature, including any living form genome;
- 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 not being susceptible of industrial application;
- Ways to show information.
- Expressly excluded from patentability are:
- The inventions whose commercial exploitation must be necessarily prevented to protect public order or morality, including the protection of life or health of people, or animals, or to preserve vegetables or to avoid serious damage to the environment or ecosystem;
- Diagnosis, therapeutic and surgical methods for people or animals; and,
- The plant and animal breeds, as well as essentially biologic procedures to obtain plants or animals.
New or second uses of patented products or processes are not patentable (Decision 486, Art. 21).
Novelty
An application has to be filed before the invention is known by the public anywhere through oral or written description, use or any other means, prior to the filing date.
The first application for a patent validly submitted in a member country of the World Trade Organization (WTO), the Andean Community, Paris Convention for the Protection of Industrial Property grants a one-year-priority right in Ecuador.
Filing requirements
- Power of Attorney in Spanish granted by the applicant, notarized and legalized with Apostille or the Ecuadorian Consulate (*)
- Specification and claims in triplicate, any suitable size on plain paper. (*)
- Drawings to metric scale in triplicate, any suitable size on plain paper. (*)
- Deed of Assignment, executed by both assignor and assignee before a Public Notary and duly legalized with Apostille or up to the Ecuadorian Consulate. This document may be incorporated into the power of attorney.
- If the applicant is a corporation, a document duly legalized up to the Ecuadorian Consulate, certifying the legal entity of the corporation is required. A Public Notary could certify it in the backside of our Power form.
- Certified copy of the first foreign application. Convention priority shall be claimed at filing, but the priority document can be submitted within thirty working days. No Consular legalization is required for this document.
- Deposit of the biological material (UPOV)
- Access contract regarding patents obtained or developed from genetic resources or their derivative products. (Decision 486, article 26)
- License or authorization to use a traditional knowledge from indigenous communities. (Decision 486, article 26)
(*) Basic information to get a filing date. Remaining documents, when applicable, can be filed within the next 2 months (term extendable once).
Formal Examination
The formal application checks for completeness of the application. Within thirty days following the application date, the applicant shall be notified with the results of the formal examination. The applicant has two months, extendible once, to reply to the examiner’s remarks. Afterwards, a publication for opposition takes place.
Publication
Once the application is correct and complete, an abstract of the specification is published in the Official Gazette within eighteen months from the application or priority date (or earlier under applicant’s request). The deadline for patent oppositions is sixty days period, in which any third parties may oppose.
Provisional Protection
A Protection Certificate is granted for the term of one year to anyone who has a project of invention under development and requires experimenting or building any mechanism that forces him to make publish his idea. The titleholder of the protection certificate shall enjoy the right of priority to submit his patent application within the year following the date of concession of the certificate. Once the application complies with the requirements, the Patent Office grants the protection certificate.
Opposition
An opposition can be filed within sixty working days following the date of publication. The opposition deadline may be extended once, upon written request. When the notice of opposition is served, the Patent Office gives the applicant sixty working days (extendable once) for submitting arguments, documents or rewriting the claims or description of the invention.
Patentability Examination
Within the term of six months from the publication date, the applicant has to request a technical examination of his patent application. Otherwise, the application will be declared abandoned (Article 44, decision 486). When the Patent Office examines the application for patentability, it may request the opinion of experts or request expert reports from other countries. Applicant may request to suspend the examination procedure until the examination in such a country is finished.
If upon examination the patent is acceptable, the patent certificate will be issued. When the determination is only partially favourable, or unfavourable, the applicant will be notified. The Patent Office gives the applicant sixty working days (extendable once) for submitting additional pleadings, including his arguments, documents or rewriting the claims or description of the invention.
General Deadlines for Responding to Office Actions
The applicant has sixty working days to reply to communications or requests of the Patent Office. Such term should be extendable only once for a like period, without losing its priority.
Patent Duration in Ecuador
Patents are in force for twenty years from the filing date.
Rights of Patentee
A patent grants to its owner the right to prevent third parties from using the invention without his consent. However, there are several limitations on this right. The patentee cannot prevent third parties from using the invention: (1) when the patented product has been placed into commerce either with the consent of the patentee or by other lawful means; (2) when the patented invention is being used privately and non-commercially; or (3) when the invention is being used for experimental, academic, or scientific non-profit purposes.
Furthermore, third parties that were using the invention privately in good faith before the priority or filing date of the application, or had made substantial arrangements to use the invention may continue using it. Additionally, such third parties have the right to start or continue exploitation in any Andean Group country; however, this right is transferable only with the company or business in which the use of the patented invention is made.
International exhaustion of the patent rights is stated.
A patent right cannot be enforced against an auto-reproducing biological material, when it is used as basis for a new material. (Decision 486, Art. 53)
Appeals
Reconsideration may be asked to the Industrial Property Director regarding an adverse official action within fifteen days after the decision.
Appeals may be filed before the Intellectual Property Committee within thirty days from the date of an ad verse office action taken by the Industrial Property Director.
Revision may be filed until the Intellectual Property Committee within three years from the date of an illegal office action.
Starting an administrative proceeding suspends the original procedure until the final resolution of the appeal.(Intellectual Property Law, Art. 357)
Judicial review: Every administrative resolution may be appealed before the Contentious Administrative Court within ninety days, even if an administrative proceeding is started.
Nullity
Within three years after the granting date, the Intellectual Property Committee may declare, ex-officio or by request, that a patent is void if it was illegally granted. Partial annulment is also available. At a judicial stage (through a Civil Judge) nullity may be declared at any time.
An action against voidable patents may be brought within five years before a Civil Court.
Recovery Actions (Decision 486, Article 237)
When a person without the corresponding right applies for a patent, the damaged person shall claim his right before the National Authority and may ask for an assignment regarding the pending application or registration. The plaintiff may also ask to be recognized as a co-applicant or co-owner of the right.
Patent Annuities
- The provisions regarding annuities are Decision 486, article 80, and the latest regulations enacted June 1st, 2010.
- The payment deadline is calculated based on the international filing date.
- Annuities must be paid regarding both, granted patents and applications.
- Annuities must be paid in advance, and for new applications, the applicant must pay for the previous years, counting from the international filing date.
- Payments for two or more annuities can be made at once.
- After the due date, a grace period of six months is granted prior to declare the abandonment.
Read more: Changes to Annuity Payment Regulations in Ecuador
Patent Use
It is mandatory to use a patent, in any Andean Pact country, directly or through a registered licensee.
To avoid compulsory licenses, the patent owner is required to use the invention within three years from the granting date or four years from the application date, whichever is later. Compulsory licenses can be granted by the Patent Office by request of a third party that has not been able to obtain a licensing agreement in reasonable conditions.
Compulsory licenses can also be granted when there are practices against free competence or abuse of a dominant position. (Decision 486, article 66)
Patent use means the industrial manufacture of the product, subject matter of the patent, or the integral use of the patented process along with distribution and marketing of the final product, or the importation together with distribution and marketing of the patented product or the product obtained by the integral use of the patented process. Nominal use, such as the general offer of a license, does not replace use.
Patent Assignment
Assignments should be recorded with the Intellectual Property Office to be effective against third parties. A deed of assignment executed by both assignor and assignee and a Power of Attorney duly notarized and legalized with Apostille or up to the Ecuadorian Consulate are required.
Patent Licensing
The patent holder is allowed to grant licenses. Licensing agreements duly legalized with Apostille or up to the Ecuadorian Consulate must be recorded; otherwise, they will not be binding upon third parties. Licensing agreements between Holdings and sister companies must be submitted for approval before the Ministry of Foreign Trade prior to their registration at the Ecuadorian Patent Office.
Related article: Licensing in Ecuador
Amendments
An applicant may modify the application or amend any material error at any time before the patent is granted, but the modification may not involve an extension of the invention or, of the disclosure contained in the application whose priority is being claimed.
In addition, the applicant may request the application to be changed to another intellectual property modality (i.e. Utility Model, Industrial Design). Furthermore an application may be divided into two or more applications. Each divided application retains the filing date of the original application. The Patent Office may request such a division at any time during the procedure of patenting.
After the patent is granted, the owner may request to the Patent Office to record any change of name or address and modify or limit the claims. Material errors may also be amended after the patent is granted.
Patent Infringement
Civil, administrative and criminal actions
These actions can be brought in case of violation of intellectual property rights. A plaintiff may request: ceasing of infringing acts; seizure of goods or other objects involved in the transgression, withdrawal from commercial channels of merchandise, as well as its destruction, seizure of tools and means used for the transgression, the compensation for court costs, damages and torts, the repairing in any other form of the effects generated by the violation.
The right to demand against an infringement lapses 2 years from the date in which the owner learned about the infringement, or 5 years from the last date of the infringement. (Decision 486, Arts. 238-244)
Preliminary injunctions: The judges are empowered to order: preliminary injunction measures which would be needed for the urgent protection of intellectual property rights and especially the immediate ceasing of illegal activities, the suspension of the illegal activity, including the use, exploitation, sale, offering for sale, imports or exports; and any other measure to stop the violation.
A formal complaint must follow the request for preliminary injunctions within the next 10 days, otherwise the injunction will be cancelled, and damages may be awarded. (Decision 486, Arts. 245-249)
In cases alleging infringement of a patented process, the burden of proof rests upon the defendant.
Border Protection Actions
Upon request of a trademark owner suspecting that an import or export infringes prior IP rights, the competent national authority may stop such imports or exports in Customs. A previous inspection will be ordered. A formal complaint must follow such suspension order within the next 10 days; otherwise this suspension will be cancelled. (Decision 486, Art. 250)
Unfair competition: Acts linked to industrial property, performed in an entrepreneurial scope, which are contrary to fair uses and practices. (Decision 486, Art. 258)
This concept is very wide and does not limit which conduct can be considered as unfair competition. However Decision 486 stated among others, the following acts of unfair competition:
- Any act capable to cause confusion, by any means regarding the establishment, goods or industrial or commercial activity of a competitor;
- False statements in the commerce, capable to tarnish the establishment, goods or industrial or commercial activity of a competitor; and
- Misleading statements regarding the nature, manufacture, characteristics, aptitude in use and quantity of the goods. (Decision 486, Art. 259)
Unfair competition actions
Whoever has legitimate interest may request the national competent authority to decide on the legality of any commercial act or practice. Decision 486 provides that unfair competition actions can be started ex-officio.
Limitation of action occurs two years after the last act of unfair competition takes place, unless the member countries state a different rule.
Trade Secrets: Non-disclosed information that may be used in any productive, industrial or commercial activity and that is susceptible of being transferred to a third party. In any case, such information must be a secret of a commercial value arising from its secrecy character. Must have been object of reasonable measures by its legitimate possessor to keep secrecy. (Decision 486, Art. 260).
When as a condition to obtain authorization for commercialisation of a pharmaceutical or agrochemical good that uses such new chemical entity, any Andean Community Member Country requires the disclosure of some data or other non-disclosed information, that involves a considerable effort, this information has to be protected against unfair commercial use. (Decision 486, Art. 266).
Such information must be protected against disclosure, excluding those cases in which the disclosure is necessary to protect the public.