Could you describe the key laws and statutes relating to intellectual property in Ecuador?
The main laws applicable to intellectual property issues in Ecuador are the following:
- Organic Code of the Social Economy of Knowledge and Innovation (Código Ingenios);
- Regulation of Knowledge Management (Reglamento de la Gestión de los Conocimientos);
- Decision 486 of the Cartagena Agreement;
- Berne Convention for the Protection of Literary and Artistic Works;
- Paris Convention for the Protection of Industrial Property;
- Convention for the Protection of Phonograms;
- Decision 345 of the Cartagena Agreement;
- Decision 351 of the Cartagena Agreement;
- Patent Cooperation Treaty;
- WIPO Copyright Treaty;
- WIPO Performances and Phonograms Treaty;
- Marrakesh Treaty; and
- Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
In particular, what key conventions and case law related to copyright?
The Ecuadorian laws that relate to copyright protection are the following:
- Organic Code of the Social Economy of Knowledge and Innovation (Código Ingenios);
- Regulation on Knowledge Management (Reglamento de la Gestión de los Conocimientos);
- Berne Convention for the Protection of Literary and Artistic Works;
- Convention for the Protection of Phonograms;
- Decision 351 of the Cartagena Agreement;
- WIPO Copyright Treaty;
- Marrakesh Treaty; and
- Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
Finally, the Authority in Ecuador constantly uses the prejudicial interpretations issued by the Court of Justice of the Andean Community.
What is the process involved in making a copyright claim in your jurisdiction?
Concerning filing an application in defense of copyright, as a first alternative, it is possible to file an application for administrative tutelage action before the IP OFFICE (SENADI). In this case, there is no single procedure for applications in defence of copyright, but there is a common procedure for the protection of all IPC rights.
Based on the experience of the applications filed before the IP OFFICE, in cases where the purpose is to safeguard copyright, the moral or patrimonial right to be protected must be clearly specified under the arguments outlined in the application.
With these specifications, the application is admitted for processing and, if deemed necessary, the IP OFFICE can grant provisional precautionary measures at the beginning of the administrative procedure. Subsequently, a term is granted to present evidence and then a final resolution is issued. This type of action is uncommon in Ecuador, as only 61 administrative tutelage actions were filled in 2022.
Another alternative route to obtain judicial precautionary measures is included in the General Code of Procedures in article 133.1, which establishes the possibility for the holder of a right to request preventive measures to avoid or to prevent the infringement or the continuation of the infringement of its intellectual property rights. In this case, once the request is filed, it is admitted for processing and after a hearing is held, the precautionary measures may be ordered.
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Although this mechanism is more expeditious, it becomes complex for the civil judges to determine or know precisely the scope of the copyright in each case. If the precautionary measures are granted, the plaintiff must file a main action within 15 days requesting a declaration of infringement of its intellectual property rights and an order that the defendant pay damages.
It is also worth mentioning that there are no specialised intellectual property judges in Ecuador. Therefore, to protect copyrights, Ecuadorian law allows the authors to resort to both judicial and administrative remedies.
In your years of practice, what trends have you observed in Ecuador's IP law sphere?
In general, trademark and copyright protection has increased over the last decade.
It is worth mentioning that the IP OFFICE does apply the prejudicial interpretations of the Court of Justice of the Andean Community, which increases the legal certainty around the protection of IP rights in general and copyrights and trademarks in particular.
However, on certain issues, such as the granting of patents of invention, the analysis made by the examiners is almost null and most patents that have been granted in countries of the region fail to be granted in Ecuador, although they use the same legislation.
What key developments are occurring at the moment?
It is worth noting that the criteria for compulsory licensing of patents have been well developed by the competent authority recently, which is the opposite of what happened in the previous decade. In its latest resolutions, there has been a clear application of the domestic legislation and a wide use of the prejudicial interpretations issued by the Court of Justice of the Andean Community.
Regarding border measures, there has been a change since the authority before whom a request is filed is now the National Customs Service. This change means that internally, between the intellectual rights authority and the customs authority, there is a constant exchange of information that allows more agile work on the part of the customs authority.
There are no specialised intellectual property judges in Ecuador. Therefore, to protect copyrights, Ecuadorian law allows the authors to resort to both judicial and administrative remedies.
Can you tell us anything about IP law developments that you expect to see in the remainder of 2023 and beyond?
It is unlikely that new regulations will be developed about intellectual property in Ecuador during the remainder of 2023.
However, it is expected that IP OFFICE will continue to develop, based on the current regulations, a clearer and more concrete modus operandi about the filing and substantiation of administrative procedures aimed at preventing and sanctioning the infringement of IP rights.
Although unlikely, Ecuador may finally implement a specific law related to medical devices in terms of the intellectual property rights derived from them. Ecuador is one of the few countries that have not legislated specifically on the subject.
Finally, and due to the prejudicial interpretations of the Andean Court of Justice, it is possible that the national legislation will finally be governed by the supranational legislation, especially Decision 486, which indicates fewer inventions as unpatentable compared to the Código Ingenios.
José Meythaler Baquero, President
Sebastián Meythaler Galarza, Head of IP
Edf Josueth González, Av 6 de diciembre, y, Quito 170517, Ecuador
Tel: +593 2-223-2720
E: smeythaler@lmzabogados.com | jmeythaler@lmzabogados.com
José Meythaler is the president and main partner of Meythaler & Zambrano. He has advised several companies in public law, corporate law, intellectual property, competition law, investment arbitration, oil law, banking and pharmaceutical law. As a result of his successful career, he is recommended by several legal publications. He is a referee of the Mediation and Arbitration Centre of the Ecuadorian American Chamber of Commerce and has been president of the Intellectual Property Committee of the Ecuadorian American Chamber of Commerce since 2010.
Sebastián Meythaler is Head of the Intellectual Property Litigation Department and Deputy Head of the firm's General Litigation Department. He specialises in advising transnational corporations, mainly pharmaceutical and agrochemical companies, regarding the defense of their patents, the protection of their test data, their competition rights and the counterfeiting and smuggling of their products. He has written several books on the protection of test data in the Andean Community of Nations, evidence in pharmaceutical patent litigation and patentability criteria in Ecuador.
Meythaler & Zambrano is one of the most prestigious law firms in the Ecuadorian market. Founded in 1995, the firm specialises in national and international legal counseling and litigation for international and domestic corporations. The firm´s highly qualified team focuses on intellectual property, regulatory counsel, competition and antitrust, arbitration and mediation, corporate and commercial affairs, dispute resolution, taxes, public procurement and public law.
