This country-specific Q&A provides an overview to intellectual property law in Ecuador.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
As a precedent, it is important to point out that Ecuador, as a member of the World Trade Organization, is a member of the Agreement on Aspects of Intellectual Property Rights, TRIPS, to the WIPO Copyright Treaty. It is also a member of the Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literary and Artistic Works, the Rome Convention on the Protection of Performers, Producers of Phonograms and the Organizations of Broadcasting, the WIPO Treaty on the Interpretation or Execution of Phonograms and the International Union for the Protection of New Varieties of Plants (UPOV).
Based on the rights enshrined in the aforementioned Agreements, Ecuador, as a member country of the Andean Community, acceded to the Common Industrial Property Regime, Common Regime on Copyright and Related Rights, Common Regime for the Protection of the Rights of Consumers of the Vegetable Varieties.
At the national level, Intellectual Property rights are governed by the Organic Code of the Social Economy of Knowledge and Innovation based on the aforementioned Agreements with certain limitations.
With the detailed background, the analysis of the protection of intellectual rights, which will be specified below are based on national and Andean legislation.
(a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);
The Ecuadorian and Andean rules protect as inventions the patents od product and procedure.
On the other hand, the legislation protects the rights on trade secrets and confidential information, which is not necessarily considered an invention.
For a better understanding, a concept of each right is detailed below:
Patent of invention: It is a means of protecting the exclusive rights on a product or a process with novelty character, industrial application and inventive level granted in favour of the inventor, so that him can exploit it commercially in a period.
Business secrets: It is undisclosed information that a natural or legal person legitimately possesses, it can be used in any productive, industrial or commercial activity, and liable of being transmitted to a third party, to the extent that said information is secret, has commercial value and that has been subject to reasonable measures to keep it secret.
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
The national and Andean legislation protect the trademark rights, such as trademarks, commercial slogans, commercial names, certification marks, collective marks and country brand.
This also protects other ways to identify a product that is not necessarily a brand, distinctive appearances, geographical indications, specifically denominations of origin and traditional specialties guaranteed.
On the other hand, the legislation protects the traditional knowledge as ancestral and local knowledge of traditional cultural expressions.
Finally, all rights are protected against any act of unfair competition.
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
National and Andean legislation protects copyright, plant varieties, industrial designs, layout designs of semiconductor circuits, topographies, utility models and traditional knowledge.
Confidential information and / or know-how is protected in all cases.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
The duration of the intellectual property rights are:
Patents of invention: 20 years from the request of the registration or from the date that the priority is claimed. There is no way to extend the right once the term of protection expires.
Utility model: 10 years from the request. There is no way to extend the right once the term of protection expires
Copyright: The author's entire life and seventy years after his death.
- Broadcasting: 50 years from the first of January of the year following the one in which the broadcast was made.
- Phonograms: 70 years from the first of January of the year following the one that the phonogram was published.
- Artists and performers: 70 years from the first of January of the year following that which the interpretation was performed
- Patrimonial community’s rights: 70 years from the registration of such work.
- Patrimonial rights in photographic works: 70 years from the publication.
- Audio-visual works: 70 years from publication.
Layout diagram: 10 years from the first commercial exploitation anywhere in the world or from the date of application for registration.
Industrial design: 10 years from the request or the date whose priority is claimed.
Brand name, trade name, designation of origin: 10 years from the date of grant. It may be renewed in successive periods.
Country Brand: Valid in time until it is changed.
Plant Variety: 18 years varieties of vines and forest, fruit and ornamental trees; and, 15 years for the other varieties counted from the certificate.
Business secret: The protection will be applied all the time in which the conditions exist to keep it a secret.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
The owner of the right is who requests it either natural or legal person. If the right to protection is claimed, the owner is the person who requested the first registration, unless the latter has transferred his rights to a third party.
In the case of copyright created during employment or under commission, ownership will correspond to the authors. However, the establishment will have a free, non-transferable and non-exclusive license for non-commercial use of the work for academic purposes.
In the case of inventions made in the course of research or academic activities in higher education institutions or public research institutes, the ownership and distribution of benefits derived from the exploitation of the patent shall be negotiated between them and the inventors involved, such as: professors, researchers or students.
In the case of a patent developed in compliance with a contract, the ownership belongs to the principal or the employer, unless stipulated otherwise.
Which of the intellectual property rights described above are registered rights?
- Designation of origin
- Traditional specialties guaranteed.
- Plant of varieties
- Utility models
- Industrial designs
- Copyright: It is the power of the creator of the work to request its registration.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
The registration of the intellectual property rights may be requested by the right holder with the signature of a lawyer or by the judicial attorney or attorney-in-fact of the owner.
In the case of designation of origin or country brand, the request for registration is made by the interested party.
The registration process is generally the following:
- Request before the competent authority (SENADI- National Secretariat of Intellectual Rights)
- Formal examination: Analysis of the documentation presented in the application according to the legal requirements (15 days)
- Publication of the application in the official document
- Submission of oppositions by third parties within 30 days (brands and designs) 60 days (patents) extendable from publication
- If opposition is presented, the applicant will be notified in 30 days (marks and designs) 60 days (patents) in order to assert their arguments and present evidence
- In the case of patents, within 60 days of the publication, an examination of the invention will be requested. If the national office finds that it is not patentable, it will notify the applicant in order to present the necessary modifications. The patentability examination may be carried out two or more times at the request of the interested party
- Once of this term has expired or the opposition is not presented, the background or registrability examination will be developed.
- Resolution of concession
How long does the registration procedure usually take?
The registration procedure lasts about 5 months if there is no opposition and if the form and background exams are favourable.
If the oppositions were presented or the exams were not favourable, it could take up to 3 years in trademarks and industrial designs; while in patents it could take up to 10 years, it depends on the complexity.
Do third parties have the right to take part in or comment on the registration process?
Yes, as long as the third parties have submitted the opposition of the registration of the right.
What (if any) steps can the applicant take if registration is refused?
The applicant can challenge the resolution that is not favourable by administrative remedies as reversal, appeal and review.
What are the current application and renewal fees for each of these intellectual property rights?
USD $ $495.33
Variety Plant Right
USD $ 310,027
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
Brands are the only rights that can be renewed. he non-payment of the fee could involve the suspension of renewal. As a measure to remedy the lack of payment at the right time is to pay the fee.
It is worth mentioning that in case of patents the non-payment of a maintenance fee results the abandonment. In this sense, it is an obligation to pay at the right time.
What are the requirements to assign ownership of each of the intellectual property rights described above?
The assignment of the registry is done through a favourable resolution of the competent entity - SENADI - and it consequently legal document that approve the granted right.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
What are the requirements to licence a third party to use each of the intellectual property rights described above?
The requirements are just an agreement between the parties with clauses that are not abusive and allow a mutual benefit.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Yes, the license agreement must be presented before the competent authority- SENADI- it will analyse that the clauses are legal.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
Border measures, precautionary actions, administrative tutelage actions, lawsuits, intellectual property office proceedings, administrative proceedings and alternative dispute resolutions either before administrative entities or judicial courts.
What is the length and cost of such procedures?
Before administrative entities from about three months to fifteen years, and on judicial courts from at least three months to two years if no appeals are filled. Appeals could delay the trial for about three more years.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
The Administrative Court and the civil judges have the jurisdiction regarding intellectual property matters in Ecuador. Most trials have a single hearing in which the judgement is delivered, but others have two hearings in which the judgement is delivered in the second. Judgements delivered on the Administrative Court cannot be appealed, but those delivered by civil judges can.
Time of judgement depend on the dates the judges decide to hold the hearing, which are usually around three to five months after filling the lawsuit or after the first hearing (if applicable).
What customs procedures are available to stop the import and/or export of infringing goods?
Border measures and precautionary actions either before administrative entities or judicial courts.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
They are not mandatory, though courts will always seek to reach a settlement between private individuals.
What options are available to settle intellectual property disputes?
Administrative tutelage actions, lawsuits and intellectual property office proceedings.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
The infraction of the intellectual property rights occurs when they are used by a third party without the authorization of the that right holder.
The useful evidence is the following:
- audit certificates that demonstrate the infringement,
- advertisement that used a product or service protected by intellectual property rights,
- experts report that validate the unauthorized use,
- samples of the infringing products.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
The Court acquires that information through the right holder that initiation the legal actions against the infringement of his intellectual rights. That information/evidence is presented to the Court during hearings.
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
Non-technical judge exists in Ecuador and none have technical knowledge. Courts do not appoint experts because they are presented to the court by the parties. The same happens with the expert witness.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
All evidence is incorporated into the trial by the parties during the hearing. That evidence in under the custody of the judge, for protection.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Information and evidence is submitted to the Court when presenting the lawsuit when it documental. If not, the evidence is only announced in the lawsuit and submitted during the hearings.
Cross-examination is available and usually used by both parties.
What defences to infringement are available?
Administrative tutelage actions, precautionary measures and lawsuits.
Who can challenge each of the intellectual property rights described above?
Any who has legitimate interest or also the intellectual property competent authority regarding compulsory licences and administrative tutelage processes.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
During the registration process and at any time during the subsistence of the right.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
The forum of challenging each of these rights is made before the competent authority –SENADI- through an action of nullity or cancellation of the right or by request of a compulsory license.
The reasons to determine the disability is that it has lost the object for which it was granted, that the owner has stopped using the right for a certain time or that the protection of the same has expired.
In the case of patents and utility models
- If the object of the patent did not an invention
- If the patent was granted for a non-patentable invention
- If the invention does not comply with the patentability requirements;
- If the patent does not sufficiently disclose the invention;
- If the claims included in the patent were not entirely supported by the description;
- If the granted patent contained a broader disclosure than in the initial application and this implied an extension of the protection.
- If the patent has been granted with any other violation of the law that has substantially induced its concession.
- Lack of use or exploitation for more than 3 years
- Lack of annual maintenance payment
- If it does not result from an intellectual effort of its creator
- The object of the registration did not constitute a layout design;
- The registration would have been granted for a layout design submitted after 2 years
- If the object of the registration did not constitute an industrial design;
- If the industrial design is not new;
- The registration would have been granted for a subject excluded from protection as an industrial design;
- When the acquisition was granted based on false data or documents that were essential for its granting;
- When the brand does not distinguish a product or service or has been vulgarized with time,
- When reproducing or imitating a right already granted.
- Lack of use for more than three years
Plant variety production:
- If the variety subject to the Breeder's Right did not comply with the requirements of novelty, distinction, stability and homogeneity at the time of granting the certificate;
- If it had been granted in favor of those who did not have the right to it;
- If the copy of the access contract has not been presented, when the variety has been obtained or developed from genetic resources or derived products of which Ecuador or any of the member countries of the Andean Community is a country of origin;
- If the reasons for nullity established in the law for administrative acts were set;
- If it has been granted with any other violation to the law that has substantially induced its concession or has been obtained based on false or erroneous data, information or documents.
- Lack of annual maintenance payment.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
The intellectual property competent authority has the power to grant compulsory licenses for the use of Intellectual right due to the following causes: (i) when the owner of those rights has negatively affected the free competition, (ii) when the rights holder of a musical piece has granted the authorization to perform that musical piece or recording to another and there in no possibility that a third person can obtain another authorization to perform it, (iii) when a literary or artistic work is not translated into spanish or other intercultural languages of the national territory, (iv) when a literary or artistic work is not available in the national market and several years have passed since its publication (three years for scientific or technological works; five years in general content works; and seven years in works regarding novels, poetry or art books); and, (v) when an audiovisual work, videogram or other audiovisual fixation is not available or accessible in the national market and has passed at least a year since its diffusion on any format.
Regarding patents, the intellectual property competent authority can also grant compulsory licensees due to lack of use of the patent for the period of three years since it was granted or for four years since it was requested (the higgest); while regrind plant varieties, when the breeder of a plant variety cannot exploit a breeder´s certificate without violating the rights resulting from a patent of invention, a compulsory license might be granted to use that patent if it is necessary to exploit that plant variety (compulsory licenses can also be granted regarding plant varieties if they are necessary to exploit an invention patent). Compulsory licenses might also be granted for layout designs due to lack of exploitation.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
Judgements of damages and settlements on which it is agreed to receive a compensation for the infringement.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
Enforcement proceeding have no cost beside those charged by the lawyers. The judged might order the offender to pay for the costs incurred by the winning party, although it does not occur frequently.