ECUADOR Law and Practice Contributed by: Arianna Zurita Farías, Annabel Muñoz, Javier Estupiñán and Juan José Flores Rabascall, VIVANCO & VIVANCO
payment results in lapse, although a six-month grace period is available to cure default upon payment of outstanding fees and surcharges. No supplementary protection certificates or patent term extensions are available, including in pharmaceutical and agrochemi- cal fields. 1.4 Ownership, Assignment and Licensing The right to apply for and obtain a patent initially belongs to the inventor or inventors, who may trans- fer such right to third parties, including employers, through contract or other legal arrangements. Where an invention is created within the scope of employ- ment or using the employer’s resources, the economic rights generally belong to the employer, unless oth- erwise agreed. The inventor retains the right to be named as such. In relation to universities and research institutions, ownership of inventions developed under research projects or employment relationships is typically gov- erned by internal regulations and specific agreements. However, inventorship always vests in the natural per- son who created the invention. Patent assignments and licences must be made in writing. To be enforceable against third parties, they must be recorded with SENADI. Without such record- al, they are valid between the parties but not enforce- able against third parties. 1.5 Patent Infringement and Defences Direct infringement arises where a third party, without the consent of the patent holder, performs any of the exclusive acts conferred by the patent, including mak- ing, using, offering for sale, selling or importing the patented product, or using the patented process. In process patents, protection also extends to products directly obtained by the process. There is no specific statutory regime for indirect infringement, although civil liability may arise under general principles for acts of facilitation or inducement. The scope of protection is primarily determined by the claims, interpreted in light of the description and drawings. The law does not expressly provide for a doctrine of equivalents, although functional and tech-
nical equivalence may be considered in practice when assessing infringement. Available defences include prior use rights, exhaustion of rights and compulsory licences granted on grounds of public interest, lack of exploitation or anti-competi- tive practices. Fair, reasonable and non-discriminatory (FRAND) obligations are not expressly regulated under Ecuadorian patent law. 1.6 Patent Enforcement and Remedies Patent infringement disputes in Ecuador are heard by specialised civil courts in IP matters, applying Andean Community Decision 486. Proceedings are brought before competent civil judges. Administrative matters relating to the grant or invalidity of a patent fall within the competence of the National Service for Intellectual Rights (SENADI), without prejudice to the possibility of raising invalidity before the courts within contentious proceedings. Timelines vary depending on complexity, but first- instance proceedings typically take between one and three years, with appeals potentially extending the overall duration. The Ecuadorian system is not bifur- cated, so issues of validity and infringement may be addressed within the same judicial proceeding. Where parallel administrative proceedings before SENADI exist, the court may continue hearing the infringement case, taking into account the status of the administra- tive process on a case-by-case basis. Interim relief is available, including suspension of infringing acts, seizure or confiscation of infringing goods and other measures aimed at preventing con- tinuation of the infringement. Ex parte (inaudita parte) measures may also be granted where urgency or risk of irreparable harm is demonstrated. Available remedies include injunctions ordering ces- sation of infringement, damages (including loss of profits), restitution of unlawfully obtained benefits, and orders for the withdrawal from the market or destruction of infringing goods. Costs rules allow for the recovery of court costs, including attorneys’ fees; however, their award is subject to judicial assessment of reasonableness and proportionality.
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