- 1.What are the novelty or inventiveness requirements for a patent to be granted?
An invention is novel when it is not in the state of the art as defined by article 16 of the Andean Decision 486 which regulates intellectual property in the Andean Community: Ecuador, Colombia, Peru and Bolivia.
Inventiveness is regulated by article 18 of the Andean Decision 486, stating that an invention has an inventive step or is non-obvious if it does not appear obvious nor is evidently derived from the state to any person skilled in the art, being normally conversant with the corresponding technical matter.
- 2.What are the criteria for considering whether an invention is obvious in view of prior art?
The problem-solution method is used to check whether an invention is obvious in view of prior art:
- identification of the closest state of the art;
- identification of the technical features of the invention that are different with respect of the previous; and
- definition of the technical problem to be solved based on the closest state of the art.
The question is, what problem is solved by the technical differences between the invention and the prior art?
The problem must be defined without including elements of the solution, because in that case the solution would be considered obvious.
- 3.What are the different types of patent protection that can be obtained in your country, for example, utility, design? How do these types of patent protection differ?
The different patent levels in Ecuador are patents of invention, utility models and industrial designs. They differ in the term of duration of the protection and the level of novelty required, for example patents of invention are protected for 20 years from the filing date, while utility models are protected for 10 years. Industrial designs can also be protected under a similar system.
- 4.If an invention is conceived in your country, does the first filing have to be made there?
- 5.What are the foreign filing licence requirements if an application conceived in your country is filed first in another?
There is no special procedure for filing licences of applications conceived in our country when first filed in another.
- 6.Are business and computer methods patentable? If yes, what are the standards for determining this? If no, are other technological areas (eg, in the field of genetics) that are not eligible for patent protection?
No, according to article 20 of the Andean Decision 486, the following are not patentable: plants, animals and essentially biological processes for production of plants or animals except non-biological or microbiological processes; and therapeutical or surgical methods for human or animal treatment, as well as diagnostic methods applied to human beings or to animals.
- 7.Summarise the current level and nature of patent litigation in your country? Are the pending litigations related to a specific industry such as the pharmaceutical industry?
Yes, most of our pending litigations are related to the pharmaceutical industry, which has strong opponents against their patentability.
- 8.What remedies are available for patent holders? For example, are monetary damages and injunctive relief available? If monetary damages are available, are such damages based on a reasonable royalty, lost profits or other provisions?
Monetary damages are calculated based on lost profits, the profits obtained by the infringer, reasonable royalties and consequential damages, among others. Because monetary damages require a long-lasting civil suit, patent holders are mainly interested in getting the infringer to cease violation. There is injunctive relief, in which a judge can request the immediate cease or suspensions of the illegal activity, and others to stop the infringement such as seizure of counterfeit goods or equipment used to produce the goods.
- 9.Is your country considering major changes to its patent system?
The government issued new regulations regarding compulsory licensing, however they have not yet been fully developed. The president announced a new Science and Technology Law, which is currently only a project with very little information available.
- 10.Is your country a signatory to or likely to join the Madrid Protocol and if so, when? Is it a signatory to the TRIPs agreement?
Ecuador is not a signatory and is not likely to join the Madrid Protocol. Ecuador has been a signatory to the TRIPs agreement since 1996.
- 11.Do your trademark clients make use of the Andean Community’s or Mercosur’s regional trademark systems and if so, how?
The Andean Community Law provides for a trademark owner in one member country to file an Andean Opposition against a trademark application in another member country. In that sense, many of our clients file oppositions in other countries based on their Ecuadorian registrations, and as required by Community Law, then they need to file an application in the new country to acknowledge real interest in that market.
- 12.What rules govern the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™ , in your country?
There are no rules that govern the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™, in our country. The use is merely informative and dissuasive.
- 13.What are the main problems affecting trademark owners in your country, and what strategies have successfully addressed these problems?
The main problems for international trademark owners are lack of registration of trademarks in our country. Some of the times, these companies find that third parties or even their local distributors have registered or are trying get registrations. It is always advisable and cost-effective to file applications in Ecuador, rather than going through oppositions or litigations. Then, a licence agreement should be granted.
- 14.Does a trademark licence have to be recorded in your country to be effective?
Yes, all licences for trademark use shall be registered with the IP Office. Lack of registration renders the licence unenforceable against third parties.
- 15.What strategies have been successful in combating counterfeiting in your country?
Depending on the matter, the trademark and the infringer, administrative actions filed before the IP Office, civil actions, criminal actions, and even border protection actions can be effective to combat counterfeiting.
- 16.Does a foreign company’s website infringing trademarks constitute use of a trademark in your country?
The content of the website must be analysed in order to establish if it is doing business or has any effects in our country, in order to establish use.
- 17.Do you recommend that companies register their domain name in your jurisdiction if they do business there?
It is highly advisable to protect domain names in our country. Even if doing business through a licensee or distributor, it is important to register the domain to the principal’s name. It is often seen that local distributors register the domains to their names or, worst of all, to the name of their website developer, which would raise domain name disputes.
- 18.Briefly highlight any particularities of your trademark law that is not well understood by foreigners doing business in your country.
The main differences with other countries are that there are no multiclass applications, and there is no use requirement to file an application. However, the most recurring issue is that in Ecuador, every document filed in an administrative or judicial procedure must be an original or a certified copy legalised with Apostille.
- 19.What are the key legal issues to be considered when registering a trademark in your country?
It’s very important to find a local agent with sufficient knowledge of Ecuadorian law, local practices and the common procedures among IP issues. Most of the issues that may come from prosecuting a trademark in our country can be solved beforehand.
- 20.Can a multi-class trademark application be filed in your country?
No, however substantial discounts can be provided when applications are filed in several classes.
- 21.Does your country allow trademark opposition proceedings? Can the deadline to file an opposition be extended?
Yes, our country allows trademark opposition proceedings, but there is no extension to the deadline.
- 22.Is copyright registration recommended for local packaging and/or marketing materials?
Depending on the industry, and the level of participation of the market, it is advisable to register them as copyrights or trademarks, or both. This could avoid conflicts with distributors.
- 23.Are there any recognised legislative safe harbours that protect internet service providers in your country from liability for the activities of its users? If so, what are the requirements or processes Internet providers must follow to claim safe harbour?
The Ecuadorian E-Commerce Law deals with internet issues; however, it is not highly developed in order to establish infringement by ISPs or even a safe procedure they should follow.
- 24.What is the standard of contributory copyright infringement in your country?
The standards for contributory infringement are the standards from our Criminal Code for accessories, aiders and abettors. There are no specific regulations in the Intellectual Property Law.
- 25.Does your country recognise intellectual or industrial property protection in databases?
There is no sui generis protection for databases. To protect a database, there needs to be an element of creativity so it can be considered and protected as a compilation. Databases can also be protected as trade secrets.
- 26.Is alternative dispute resolution used in your country to resolve intellectual property disputes? What are the benefits or dangers of using ADR?
Every time there are more disputes solved out of court or out of the administrative stage. The main benefits are that the time is shorter and it is not as expensive, while the danger of using ADR is that if one party breaks the agreement the other party must use the judicial procedures.
- 27.Can intellectual property rights be recorded with certain government agencies in your country, like Customs or the Border Control, to help prevent the import or export of counterfeit goods?
Intellectual property rights can be recorded before the Customs Agency in order to prevent the import or export of counterfeit goods. If there is notice of an infringing shipment, there are actions that can be started before the Customs Agency in order to stop the shipment.
- 28.Describe any recent major developments or anticipated changes in your intellectual property law.
Recently the IP Office stopped granting extensions to the deadline to file oppositions. There are rumours about a new Science and Technology Law, but there is not enough information available. Ecuadorian IP law has been harmonised with international IP law for many years and in many areas.
- 29.Describe any significant recent court decisions in your country relating to intellectual property.
The IP Committee granted the registration of trademark ‘Chopin’ in class No. 33 to the Polish company Podlaska Witwornia Wodek ‘Polmos’ Spolka Akcyjna, which meant a precedent on trademark registration of personal names and likenesses in Ecuador. The appeal before the IP Committee was successfully handled by our firm.
- 30.Has your country adopted a national legal framework for the protection of personal information in computerised form? If so, generally describe the scope of the framework, who must comply with its requirements, and the consequences of non-compliance. If not, describe how your country regulates personal data security and privacy.
There is no specific framework regarding protection of personal data other than the rights granted by the Constitution. The Constitution grants the right to the protection of personal data, including the access and information about these data. Collection, storage, processing, use, transfer or sharing of personal data needs the authorisation of the owner of the personal data or must be required by law. Furthermore, the constitution grants the right to privacy of a person’s convictions, parentage, political views, health and sexual life, unless required for medical attention.
These constitutional guarantees of privacy are still a broad concept. There are some scattered laws relating to various topics, but there is no specific legal framework regarding use of personal data. For example, some aspects are discussed in our e-commerce laws, which require the consent of the individual or an order of the competent authority to collect, use, share or export personal data.
- 31.Does your country’s data protection regime distinguish between sensitive and non-sensitive data?
- 32.Do special data protection rules apply to certain industries, such as financial services, health care, telecommunications? Give details.
- 33.Are there registration, notice, or official licence requirements with government entities in connection with the collection, use, storage, transfer or sharing of personal data? If so, what are they?
- 34.Does your jurisdiction require notice to affected individuals or a governmental authority in the event of personal data compromise? If so, in what circumstances and are there any special notice requirements?
- 35.Does your country require companies doing business there to publish and distribute a statement or policy describing its personal data security and processing practices?
- 36.Does your country require that individuals are given notice and consent to the collection, use, sharing or exportation of personal data?
- 37.Does your country impose restrictions on the exportation of personal data to another jurisdiction? If so, what are they?
Please see question 30.
Contributing Author
Contributing Editor
Questions
- 1.What are the novelty or inventiveness requirements for a patent to be granted?
- 2.What are the criteria for considering whether an invention is obvious in view of prior art?
- 3.What are the different types of patent protection that can be obtained in your country, for example, utility, design? How do these types of patent protection differ?
- 4.If an invention is conceived in your country, does the first filing have to be made there?
- 5.What are the foreign filing licence requirements if an application conceived in your country is filed first in another?
- 6.Are business and computer methods patentable? If yes, what are the standards for determining this? If no, are other technological areas (eg, in the field of genetics) that are not eligible for patent protection?
- 7.Summarise the current level and nature of patent litigation in your country? Are the pending litigations related to a specific industry such as the pharmaceutical industry?
- 8.What remedies are available for patent holders? For example, are monetary damages and injunctive relief available? If monetary damages are available, are such damages based on a reasonable royalty, lost profits or other provisions?
- 9.Is your country considering major changes to its patent system?
- 10.Is your country a signatory to or likely to join the Madrid Protocol and if so, when? Is it a signatory to the TRIPs agreement?
- 11.Do your trademark clients make use of the Andean Community’s or Mercosur’s regional trademark systems and if so, how?
- 12.What rules govern the use of the registered trademark symbol, ®, or the unregistered trademark symbol, ™ , in your country?
- 13.What are the main problems affecting trademark owners in your country, and what strategies have successfully addressed these problems?
- 14.Does a trademark licence have to be recorded in your country to be effective?
- 15.What strategies have been successful in combating counterfeiting in your country?
- 16.Does a foreign company’s website infringing trademarks constitute use of a trademark in your country?
- 17.Do you recommend that companies register their domain name in your jurisdiction if they do business there?
- 18.Briefly highlight any particularities of your trademark law that is not well understood by foreigners doing business in your country.
- 19.What are the key legal issues to be considered when registering a trademark in your country?
- 20.Can a multi-class trademark application be filed in your country?
- 21.Does your country allow trademark opposition proceedings? Can the deadline to file an opposition be extended?
- 22.Is copyright registration recommended for local packaging and/or marketing materials?
- 23.Are there any recognised legislative safe harbours that protect internet service providers in your country from liability for the activities of its users? If so, what are the requirements or processes Internet providers must follow to claim safe harbour?
- 24.What is the standard of contributory copyright infringement in your country?
- 25.Does your country recognise intellectual or industrial property protection in databases?
- 26.Is alternative dispute resolution used in your country to resolve intellectual property disputes? What are the benefits or dangers of using ADR?
- 27.Can intellectual property rights be recorded with certain government agencies in your country, like Customs or the Border Control, to help prevent the import or export of counterfeit goods?
- 28.Describe any recent major developments or anticipated changes in your intellectual property law.
- 29.Describe any significant recent court decisions in your country relating to intellectual property.
- 30.Has your country adopted a national legal framework for the protection of personal information in computerised form? If so, generally describe the scope of the framework, who must comply with its requirements, and the consequences of non-compliance. If not, describe how your country regulates personal data security and privacy.
- 31.Does your country’s data protection regime distinguish between sensitive and non-sensitive data?
- 32.Do special data protection rules apply to certain industries, such as financial services, health care, telecommunications? Give details.
- 33.Are there registration, notice, or official licence requirements with government entities in connection with the collection, use, storage, transfer or sharing of personal data? If so, what are they?
- 34.Does your jurisdiction require notice to affected individuals or a governmental authority in the event of personal data compromise? If so, in what circumstances and are there any special notice requirements?
- 35.Does your country require companies doing business there to publish and distribute a statement or policy describing its personal data security and processing practices?
- 36.Does your country require that individuals are given notice and consent to the collection, use, sharing or exportation of personal data?
- 37.Does your country impose restrictions on the exportation of personal data to another jurisdiction? If so, what are they?
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