Ecuador: The Contentious Administrative Court Recognized The Right To Repetition When A Patent Expires Before A Resolution

Article 50 of Decision 486 of the Andean Community ("Decision") determines that the duration of a patent is twenty years, starting from the date of submission of the application in the member country. Therefore, this ruling means that the applicant has twenty years to process the granting of his patent and make effective the right that this protection gives him.

On May 25, 2000, a foreign company applied to protect the patent "PREVENTION OF AMYLOIDOGENIC DISEASES." Eight years later, in November of 2008, the National Industrial Property Directorate denied said patent, considering that it did not meet the patentability requirements. The petitioner filed an appeal, which was rejected in January of 2011. Faced with this resolution, the petitioner filed a subjective action before the Contentious Administrative Tribunal of Quito ("Tribunal") in May of the same year.

In April of 2021, the Judges of the Court ruled that the patent in question did meet the patentability requirements determined in the Decision. The ruling stated that: "After reviewing the procedural precautions, it is verified that the patent application was presented on May 25, 2000, that is, the twenty years of validity were completed on May 25, 2020. Decision 486 nor the Intellectual Property Law provides for the possibility of compensating the validity of patents for delays during the granting process, which means that, although this Court considers that the requested patent meets the requirements, its protection will not be enforceable since it expired. "

The procedure at the administrative headquarters lasted eleven years and at the judicial offices ten more years. Thus, a total of twenty-one years passed for the requesting foreign company to obtain a definitive answer on the patent they wanted to protect. For this reason, the verdict also determined that: "The plaintiff has the right to file an action for damages caused by unjustified delay in processing this patent by the State, and the State's right to repetition against of the responsible officials."

For the first time in Ecuador, a court passed judgment on the right to repetition that helps the applicant for a patent take action against the State due to the delay in processing. The ruling recognized the application's patentability. However, even if the State is sued for the damages caused, the damage is still irremediable. Moreover, the repetition would seek, in any case, to sanction the officials responsible for the unjustified delay, who must answer for the damages caused. So then, how can you compensate for this mistake?

As the Judges correctly determined, no law regulates or compensates for the time invested in the processing of a patent. Considering that the validity is twenty years, the time that the process takes is simply subtracted from this period. That is, when they have exceeded this established time, the applicant will never be able to enjoy the rights acquired with the concession of the patent, not even for a short time.

A similar precedent occurred in Mexico in 2019. A German pharmaceutical company filed an amparo against the IMPI¹ for the time lost due to administrative delay in the registration of a medical patent granted more than five years later after they requested it; In other words, out of the twenty years of validity that Mexican legislation also grants for a patent, the pharmaceutical company was only going to enjoy fourteen. In October 2020, The Supreme Court of Justice of the Nation of the United Mexican States ruled in favor of the pharmaceutical company. They granted a term of 17 effective years for the exploitation of the patent. Furthermore, they ordered the IMPI to² issue an official communication on the patent's validity, mainly on account of the verdict.

These cases make it clear that reform is necessary regarding the provision of forms of compensation for the delay in the processing of patents so that the applicant is allowed to enjoy twenty years of protection. Furthermore, this ruling makes effective constitutional rights and guarantees and promotes the implementation of an efficient and agile procedural system.

Footnotes

1. Mexican Institute of Industrial Property.

2. Mexican Institute of Industrial

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