Our law firm noted to the authorities of Ecuador that there was an inconsistency between the Patent Department and the Collegiate Body of Intellectual Rights when calculating the effective date of the patents that were filed through the Patent Cooperation Treaty (PCT). The Collegiate Body of SENADI, the highest administrative instance of the IP Office in Ecuador, is the one who resolves the appeals that are filed against the resolutions of the Patent Department and, to date, has understood that the calculation must be made from the date of priority claimed in the international application for a PCT patent. (Resolution OCDI-2024-004).
However, the Patent Department, in the application of numeral 2 of article 291 of the Organic Code of the Social Economy of Knowledge, Creativity, and Innovation (2016-IP Law of Ecuador), grants protection for 20 years, starting from the date of submission of the international application of the patent of invention. (Patent registration certificate issued in SP-06-6512).
Ingenios Code Article 291.- Duration of patent registration- The patent will have a duration of twenty years, counted from the date of filing the application. The filing date will be:
- In the case of national applications, the date of filing of the application, is certified by the national authority competent in matters of intellectual rights.
- In the case of international applications, the date of submission of the international application; either,
- In the case of applications that claim priority under some other treaty, the date of submission of the application whose priority is claimed.
According to Order No. OCDI-2024-087 dated September 4, 2024, the Collegiate Body of Intellectual Rights has resolved to modify the criteria that it had been using and to revoke ex officio those previous administrative acts that had erroneously counted the validity of the invention patents filed through the PCT route in Ecuador. It was decided to return the procedure that was the subject of the erroneous interpretation to its previous procedural instance.
The Order agrees that the adequate interpretation is to take into account the international filing date of the patent, following what is stipulated in Article 11 paragraph 3 of the Patent Cooperation Treaty, which states:
Article 11. (3) Without prejudice to the provisions of Article 64.4), any international application that meets the requirements listed in points i) to iii) of paragraph 1) and for which an international filing date has been granted, shall qualify for effects of a regular national filing in each designated State from the date of international filing, which will be considered the date of effective filing in each designated State.
This, in turn, is consistent with what is regulated by the Organic Code of the Social Economy of Knowledge, Creativity, and Innovation, in its article mentioned above 291, and establishes a homogeneous interpretation of the norm in Ecuador.
Our law firm specializes in patent and trademark matters in Ecuador and provides legal support and advice to national and foreign clients in these areas of law.
Janet Hernandez C.
ABREU & ASOCIADOS
