New IP Law in Ecuador: Implications for patents
By Marta Garcia
As previously reported in our blog, in October 2016 the Ecuadorian Parliament approved the Organic Code for the Social Economy of Knowledge, Creativity and Innovation (a.k.a. INGENIOS Code), which includes a new Intellectual Property Law that repeals the previousIP Law of 1998 (amended in 2006). Subsequently, the code was passed on to the President of Ecuador, who objected to parts of the document, and the final version including all the changes proposed by the President was approved on November 29, 2016, and published in the Official Register on December 9, 2016.
The aim of INGENIOS is to develop an Ecuadorian productive model by encouraging local research and innovation and reducing imported technology.
Regarding patents, the new IP Law has introduced considerable changes as described below:
- The following products are excluded from patentability for not being considered as inventions: new forms of a known substance, such as salts, esters, ethers, complexes, combinations and other derivatives; polymorphs, metabolites, pure forms, particle sizes, and isomers of a known substance; genetic resources containing biological diversity and agro-biodiversity. Additionally, the prohibition to patent uses in general and any new property or use of a known substance, already established in Decision 486, is specified in the new Law.
- A new subjective requirement for a “significant technical contribution” has been introduced for the inventive step assessment. Additionally, the code introduces a definition of “person skilled in the art” as “an expert or a group of experts with qualifications and expertise in the technical field of the invention.”
- In the case of claims referring to a group of chemical-pharmaceutical products, the new law requires that the patent application provides enough information about assays and experiments to reproduce each embodiment of the invention, unless the description contains proof that the same result would be obtained if any element of the claimed group is replaced.
- The new IP law establishes that inventors under an employment relationship will retain at least 25 percent of the patent ownership, so they will receive patent royalties. Regarding inventions carried out in universities or research centers, the law establishes that inventors will retain no less than 40 percent of the patent ownership. Additionally, when an employment contract does not require an employee to use his/her own inventive activity, ownership is granted to the employee, but the employer is granted a non-exclusive license for use. In case the employee develops the invention without using the employer’s resources or information, ownership will be granted to the employee.
- The code also has additional new cases in which a patent can be revoked, such as the following:
- – if the patent does not sufficiently disclose the invention;
- – if the granted claims are not entirely supported in the description;
- – if a copy of the access contract has not been filed, when the products or processes of the patent have been obtained or developed from genetic resources from Ecuador;
- – if a copy of the document proving the license or authorization to use the traditional knowledge of the indigenous, Afro-American or local communities of Ecuador or the member countries of the Andean Community, has not been filed, when the products or processes of the patent have been obtained or developed from such knowledge of which Ecuador or any member of the Andean Community is a country of origin.
- Regarding compulsory licenses, the new IP Law has established that they may be granted due to lack of use from the third year of the patent grant or from the fourth year after the application for the license, provided that the patent has not been used or if this was suspended for more than one year. Additionally, the code establishes a compulsory license regime due to public interest, emergency or national security, and in the following cases: anti-competitive practices, dependency of a patent on a former patent, plant varieties depending on a patent, and lack of an agreement in the case of inventions obtained in education and research centers.
Nonetheless, it should be pointed out that as Ecuador is a member of the Andean Community, supranational Decisions 486 (Intellectual Property), 345 (Plant Variety Rights), 351 (Copyrights) and 391 (Traditional Knowledge) are in force and prevail over the new national IP Law.
Click here to read the INGENIOS Code.