PRELIMINARY NOTE:

In order to stress differences between former Decision 344 and now enacted Decision 486, phrases and words in "script" refer to modifications or new matters included in the new Decision 486 of the Cartagena Agreement.

Law

Intellectual Property Law, effective May 19, 1998; Regulations to Intellectual Property Law, enacted in February 1990 R.O. # 120. Decision 486 of the Cartagena Agreement, enacted on December 1^st, 2000, Decision 345 of the Cartagena Agreement; Regulations for the protection of vegetal varieties, effective July 20, 1994; Decision 291 of the Cartagena Agreement, dealing with foreign investments and licensing, Decree No. 415-93: Rules for applying norms to foreign investments, effective January 13, 1993. Law No. 46-97 for the promotion and guaranty of investments, effective December 19, 1997. Matters not covered by Decisions 486 and 345 continue to be regulated by the domestic laws of Ecuador.

Transitional Provisions

Pending applications at the Patent Office shall be handled according to the new Intellectual Property Law. Any industrial property right validly granted should be ruled according to the legislation in force at the granting date, except the validity of registrations, which has to be modified in accordance with Decision 486. Regarding “patents” and “trademarks” no modification in the validity term was stated.

The Supreme Court shall organize the district courts for intellectual property cases.  Meanwhile, intellectual property district courts are established, the Contentious and Administrative Courts are in charge of Intellectual Property cases, except the injunction actions, which remain under competence of civil judges.

Conventions

Cartagena Agreement. Trade Related Intellectual Property Rights (TRIP’s). Paris Convention for the Protection of Industrial Property.  Patent Cooperation Treaty (PCT).

Who May Apply

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.

What is patentable

Patent shall be granted for any invention, being of products or procedures, in all fields of technology, proving that it is novel, possesses an inventive level and has some industrial application.

What is not patentable

• The following items shall not be considered as inventions:
1. Discoveries, scientific theories, mathematical methods;
2. Materials already existing in nature, including any living form genome;
3. Literary and artistic works or any other aesthetic creation; 
4. 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;
5. Ways to show information.
• Expressly excluded from patentability are:
1. 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;
2. Diagnosis, therapeutic and surgical methods for people or animals; and,
3. The plant and animal breeds, as well as essentially biologic procedures to obtain plants or animals.

New uses of patented products or processes are not patentable.( Decision 486, Art. 21)

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 of an invention validly submitted in a member country of the World Trade Organization (WTO), the Andean Community, Paris Convention for the Protection of Industrial Property grants one-year-priority right in Ecuador. 

1. Power of Attorney in Spanish granted by the applicant, notarized and duly legalized up to the Ecuadorian Consulate (*)
2. Specification and claims in triplicate, any suitable size on plain paper. (*) 
3. Drawings to metric scale in triplicate, any suitable size on plain paper. (*)
4. Deed of Assignment, executed by both assignor and assignee before a Public Notary and duly legalized up to the Ecuadorian Consulate.  This document may be incorporated into the power of attorney.
5. 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. 
6. 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.
7. Deposit of the biological material (UPOV)
8. Access contract regarding patents obtained or developed from genetic resources or their derivative products. (Decision 486, article 26)
9. 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

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. (See Publication and Opposition.)

Publication 

Provisional Protection

A Protection Certificate is granted for the term of one year to who has under development a project of invention and requires experimenting or building any mechanism that obligates him to make public 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 proved that the application complies with the requirements, the Patent Office grants the protection certificate.

Opposition

Within the term of sixty working days following the date of publication, it can be filed opposition. The opposition deadline may be extended once, upon request. The Patent Office gives the applicant sixty working days (extendable once) starting at the notification date, for submitting his arguments, documents or rewriting the claims or description of the invention. 

Examination

Within the term of six months as from the publication date, the applicant has to request a technical examination of his patent application; otherwise, this application will be declared abandoned (Decision 486, article 44). After requesting the examination, the Patent Office shall proceed to examine patentability. It may request the opinion of experts. It may also require the results of examinations done in other countries.

Applicant may request to stop the examination procedure until the examination in such a country is finished.

General Deadlines for Responding to Official 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.

Duration

Rights of Patentee

A patent grants to its owner the right to prevent third parties from working the invention without his consent. However, there are several limitations on this right.  The patentee cannot prevent third parties from working 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 before the priority or filing date of the application were using the invention privately in good faith or had made substantial arrangements to make use of 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)

Appeal

Reconsideration may be asked to the Industrial Property Director regarding an adverse official action within fifteen days after the decision.

Appeals may be filed until the Intellectual Property Committee within thirty days as from the date of an adverse official action taken by the Industrial Property Director.

Revision may be filed until the Intellectual Property Committee within three years as from the date of an adverse official action.

Starting an administrative resource suspends the original procedure until the final resolution of such a resource.(Intellectual Property Law, Art.  357)

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 available. At a judicial stage (through a Civil Judge) nullity may be declared at any time.

Claiming Actions (Decision 486, Article 237)

Annuities  

1. The new provisions regarding annuities are (Decision 486, article 80):

2. Annuities must be paid regarding both, granted patents and applications.*

3. Annuities must be paid in advance.

4. Payments for two or more annuities can be made at once.

5. Deadline to pay annuities is the last day of the month in which the patent was originally deposited.

6. After the due date, a grace period of six months is granted prior to declare the case abandoned.

* Notwithstanding that new provisions provides that pending applications must pay annuities, the Patents Office actually don’t charge such annuities since domestic law does not contemplate such a payment.

Working

It is mandatory to work a patent, in any Andean Pact country, directly or through a registered licensee.

To avoid compulsory licenses, the patent owner is required to work the invention within three years as from the granting date or four years as 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)

Assignment  

Assignments should be recorded to be effective against third parties.  It is required a deed of assignment executed by both assignor and assignee, including a Power of Attorney duly notarized and legalized up to the Ecuadorian Consulate.

License

The patent holder may grant licenses. Licensing agreements duly legalized up to the Ecuadorian Consulate must be recorded; otherwise, they will not be binding on third parties. Licensing agreements between holdings and sister companies must be submitted for approval until the Ministry of Foreign Trade, prior its registration in the Patent Office.

Amendments

 An applicant may modify the application or amend any material error at any time before granting, 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.  Furthermore, if there is no extension of the invention, 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 granting, the patent 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 granting.

Infringement

Civil, administrative and criminal actions can be taken in case of violation of intellectual property rights. A demand may request for: Ceasing of violation 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 and 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 as from the date in which the owner learned about the infringement, or 5 years as from the last date of the infringement. (Decision 486, Arts. 238-244)  

Preliminary measures, 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 demand must follow the preliminary measure within the next 10 days, otherwise such preliminary measure will be cancelled. (Decision 486, Arts. 245-249)

In cases alleging infringement of a process, the burden of proof rests upon the defendant.

Border Measures

Upon request of a trademark owner suspecting that an import or export infringes his prior rights, the competent national authority may stop such imports or exports in Customs. A previous inspection will be ordered. A formal demand must follow such suspension order within the next 10 days; otherwise this suspension will be cancelled. (Decision 486, Art. 250)

UNFAIR COMPETITION

This matter is introduced into the Andean Community legislation, for the first time through Decision 486, but it has been already incorporated into the Ecuadorian Intellectual Property legislation in 1999.

Decision 486 of the Cartagena Agreement includes a chapter for unfair competitions and trade secrets.

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)

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.

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.

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