Ecuador Intellectual Property Institute Approves New Guidelines the Simplification of the Procedures
by Moeller IP Advisors
After the recent amendments to the Intellectual Property Law in December 2016 with the INGENIOS Code (Code on Social Economics of Know-how, Creativity and Innovation), Ecuador follows the same path, in an effort to reform and improve the IP legal scenario.
In June the Ecuadorian Institute of Intellectual Property (IEPI) has approved new guidelines in the framework of the 2017 National Plan for Simplification of Procedures (PNST), aimed at streamlining the application procedures for the Collective Management Societies, organisations which represent copyright owners’ rights.
In particular, registering Collective Management Societies will take now only 16 hours (not 160, like under the old procedures); registering an agreement with a correspondent society abroad will also take 16 hours – great improvement if compared to the 20 days under the previous rules. The procedures for the constitution of a Collective Management Society passed from 12 months to 6 months; the registration of mandates for collecting societies decreased from 160 to only 16 hours. Finally, the procedure for reforming the statute of a Collective Management Society was decreased to 20 days.
Last year, the Ecuadorian Institute of Intellectual Property had approved another set of guidelines with the aim of improving and streamlining the registration of artistic and musical works and computer programs. The new procedures reduced the number of requisites to obtain the registration and shortened the time for completing the registration from 22 days to just one day.
Similarly, in 2016, the IEPI had approved guidelines to speed up the registration of trademarks, slogans and trade names. The registration procedure was reduced to six months and the procedure in case of opposition to distinctive signs was cut to nine months.
The National Plan for Simplification of Procedures (PNST) has been launched by the Ecuadorian Government in 2014 and is involving several bodies within the Public Administration. The IEPI is one of the institutions which, so far, has implemented the most corrective actions.
On November 29, 2016, the plenary session of the Ecuadorian National Assembly confirmed President Rafael Correa’s veto exempting management entities representing authors both from Ecuador and around the globe from requesting prior authorization when music is used in public shows. Furthermore, this decision does not ensure that the companies in charge of producing events inform the artists of all the musical themes interpreted. Therefore, the right to receive a fair remuneration for the creative work performed it is not guaranteed.
The decision was received negatively by the authors and composers as well as the management entities that represent them. The authors and composers feel unprotected since there is no guarantee that the organizers will pay for the license, as has already happened in some cases. Likewise, Troi Alvarado, president of the country’s Copyright Society (Sayce), who agrees with the fears expressed by the authors and composers, explains that “This new regulation favors the interests of entertainment entrepreneurs, who although they must present the license, they will not do it prior to the event.”.
Consequently, Alvarado argues the necessity to obtain the ‘prior authorization’ as it is a fundamental requirement that the artist should have the right to allow or reject usage in any circumstance. Having such decision, that takes away the author’s decision rights to prevent that the use of such works in any public performance is illegal.Finally, it is important to remark that this matter transcends the Ecuadorian borders. This decision will not only affect musicians residing in Ecuador, but also all those whose music is performed in Ecuador.
Unfortunately, there is neither information about why the president made this decision nor why the assembly confirmed it. Please follow our blog to receive updates on this development.
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.
On October 11, 2016, the Ecuadorian Parliament approved the Organic Code for the Social Knowledge and Innovation Economy (a.k.a. INGENIOS Code). This Code intends to modify the way in which knowledge is generated, used and distributed in Ecuador, by changing the ways in which Universities and other institutes invest and manage their investigation and development departments, as well as their budgets.
Furthermore, a new legislation for IP has been included in this Code, derogating the previous one, in force since 2006.
Some of the changes include the creation of a register for ancestral knowledge, and regulate the use of said ancestral or traditional knowledge in the creation and distribution of new literary or artistic works.
Some of the points that have raised some concern are, for example, art. 82 of the Code, which expressly state that, since IP rights are limitations to knowledge as a public domain good, they will be subject to a social function and responsibility. Some debate has been generated, as to whether or not the government could expropriate these rights if it is deemed necessary. Also, in patents, some inventions have been declare as not patentable, such as salts, ethers and combinations.
Other novelties, include the declaration of Internet as a public service, therefore granting the State a stronger presence in the control and regulation of its provision, the obligation for universities to grant full scholarships, and the prohibition for universities to operate for profit.
It remains to be seen whether some of its regulations are against the mandatory norms of Decision No. 486 issued by the Andean Community of Nations in the year 2000.
The Code passed on to the President, who has objected 19 articles. The Parliament has now until mid-December to solve these vetoes.
Ecuador has been moved from the Priority Watch List to the Watch List in the 2016 Special 301 Report of the Office of the United States Trade Representative (USTR). The basis for this upgrade is the reinstatement in Ecuador of criminal procedures and penalties for commercial scale counterfeiting and piracy, which was the basis for downgrading it to the Priority Watch List in 2015.
Nevertheless, concerns remain regarding Ecuador´s enforcement of IPR against widespread counterfeiting and piracy, as well as the draft Code of the Social Economy of Knowledge, Creativity, and Innovation (known as draft bill INGENIOS) which, according to the USTR, in its current form “would represent a departure from international practice and could threaten foreign investment in and further development of Ecuador’s innovative and creative industries.” Moreover, Ecuador is also encouraged by the USTR to bring its patent maintenance fees back into alignment with international practice and to provide clarification on its processes related to the compulsory licensing of pharmaceuticals.
The Special 301 Report is an annual review of the global state of IPR protection and enforcement aimed at identifying trade barriers to U.S. companies and products due to the intellectual property laws in other countries.
The annual report identifies a list of "Priority Foreign Countries" which are judged to have inadequate intellectual property laws, as well as a “Priority Watch List” and a “Watch List”, containing countries whose intellectual property systems are deemed of concern to the U.S.
The 2016 Special 301 Report also deems other fourteen Latin American countries of concern regarding IPR. Argentina, Chile and Venezuela remain in the Priority Watch List and, according to the USTR will be the subject of particularly intense bilateral engagement during the coming year. Barbados, Bolivia, Brazil, Colombia, Costa Rica, Dominican Republican, Guatemala, Jamaica, Mexico and Peru remain in the Watch List during 2016 and, according to the report also merit bilateral attention to address underlying IPR problems.
Please click here if you want to read the complete 2016 Special 301 Report.
The Ecuadorian Institute of Intellectual Property (IEPI) has launched a program for the optimization and automatization of procedures within the framework of the National Plan for the Simplification of Procedures. The new online processes will speed up the applications and registrations filed before the IEPI and reduce the response times.
Processes and response times for trademark, slogan and trade name registrations should be reduced to six months. Additionally, the response time for distinctive sign oppositions will be reduced to nine months.
The IEPI has also reported that the number of requirements for the inscription of the following contracts will be reduced: databases, computer programs, audiovisual works, literary works and phonograms. The response time for these processes will be one day.
On April 7, 2016, Ecuador ratified the World Intellectual Property Organization (WIPO) Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are Blind, Visually Impaired, or Otherwise Print Disabled (VIPs), adopted in Marrakesh, Morocco, in June 2013. Ecuador had already signed the treaty on May 8, 2014.
The Marrakesh Treaty is part of the international copyright treaties administered by WIPO. Its main goal is to create a set of mandatory limitations and exceptions to domestic copyright laws for the benefit of the blind, visually impaired, and otherwise print disabled.
It will come into force once it has been ratified by 20 eligible parties. Eight out of the 16 countries that have so far either ratified or acceded to the Marrakesh treaty are from the Latin American region, with Ecuador joining Argentina, Brazil, El Salvador, Mexico, Paraguay, Peru and Uruguay.
The Commission on Justice and Structure of the State (“Comisión de Justicia y Estructura del Estado”) approved amendments to the Criminal Code (Código Orgánico Integral Penal – COIP) on August 25, 2014, concerning criminal offenses on the violation of intellectual property rights, after intense discussions.
The Criminal Code, which was published in the Official Gazette on February 10, 2014, has been reformed 13 times already.
The goals of the proposed code reform include punishment with fines for trademark counterfeiting and copyright piracy. These reforms are necessary considering that Ecuador is a member of the World Trade Organization (WTO), and therefore should make the best effort possible to take effective action against any infringement of intellectual property rights.
The TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights) agreement requires all members to uphold minimum standards to provide adequate protection and enforcement of intellectual property, which means a series of options such as the judicial, administrative customs and criminal options. Ecuador currently fulfills these standards, except for the criminal aspect, which is the goal of the proposed reform.
For more information regarding the new text of this legislation, please click here.
On May 29, 2015, Ecuador established a draft bill for a new and comprehensive IP law.
The Organic Code of Social Economy of Knowledge, Creativity and Innovation, known as draft bill INGENIOS and recently approved by the Ecuadorian President Rafael Correa, was sent to the Legislative Authority (National Assembly) for debate.The aim of INGENIOS is developing an Ecuadorian productive model by encouraging local research and innovation and reducing imported technology.
This draft bill will repeal the current Ecuadorian IPlaw, which dates from the late 90s. According to Rene Ramirez, staff of the National Secretariat for Higher Education, Science, Technology and Innovation (SENESCYT), which released the new draft law, the current IP law has failed since it “has neither created any innovation nor attracted direct foreign investment […] It was a law designed to favor multinationals […] and this has prevented the local industry from developing.”
Regarding patents, article 256 of the new draft law excludes from patentability the following products 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; uses in general and any new property or use of a known substance, or the use of a known procedure or machine; genetic resources containing biological diversity and agro-biodiversity. Additionally, article 261 excludes from patentability traditional knowledge of indigenous and/or local communities related to, for example, biodiversity, agriculture or health.
In the case of claims referred to a group of chemical or pharmaceutical products, article 271 of the draft law requires that the application provide enough information about assays and experiments to reproduce each embodiment of the invention. Furthermore, article 272 requires that the abstract include the generic name of the pharmaceutical product when it is known at the time of filing. Both these requirements are clearly aimed to limit the scope of the application to specific products, instead of Markush formulas.
Click here to read the draft bill INGENIOS.
Check back Moeller´s blog to see updates about any developments.
The updating of the software for copyright registry management (GDA) used by the Ecuadorian Intellectual Property Institute (IEPI) has been recently overseen by technology staff consultant of the World Intellectual Property Organization (WIPO).
After an author applies — either in person or online — for a copyright before the IEPI, a file is opened. Afterwards it is forwarded to the experts that analyze the work, and finally the GDA creates a record. This system is applied to all the copyright registries in Ecuador.
“The IEPI had a GDA system dating back to 2006, and which has now been upgraded. Moreover, the capacity of servers where the GDA system is located has been increased in order to avoid mistakes when opening a record or searching on its database,” says WIPO technology consultant Hernán Urrutia.
Urrutia, who is also training the IEPI staff on the use of the newly updated computer platform, says that the enhancement of this tool will make it more reliable for authors registering works in Ecuador.