As of December 9, 2016, a new Intellectual Property system is in force in Ecuador. The Organic Social Economy of Knowledge, Creativity and Innovation Code, hereinafter the “Code”, was published in the Official Gazette on said day, which also governs a series of other matters, replacing the Intellectual Property Law of 1998.

The Executive Branch has a deadline of 180 days to issue the General Regulation to this Code.

Our Firm previously made an observation regarding some concerns in the Code related to its content and grounds, especially with regards to intellectual property, which still remains. Nevertheless, the Code expressly acknowledges the term and supremacy of international treaties signed and ratified by Ecuador in relation to intellectual property.

The issues that modify the previous system in effect and that could be a concern or matter of interest for owners of intellectual property rights in Ecuador are included in the following link:

• GENERAL PROVISIONS AND PRINCIPLES
• INDUSTRIAL PROPERTY – TRADEMARKS
• COPYRIGHTS AND SIMILAR RIGHTS
• PATENTS, MODELS OF USE AND INDUSTRIAL DESIGNS
• PLANT BREEDER’S RIGHTS
• OBSERVANCE OF IP RIGHTS
• GENERAL AND TEMPORARY PROVISIONS

To read the attachments download the material .. !!

We are proud to share with you that our Intellectual Property and Anti-Piracy Unit has been honored this year too with recognitions in the following important international publications:

– LEADERS LEAGUE:   Plant Varieties’ Protection, 2017 Ranking  of  the Best Law Firms in Ecuador – TMT,  Trademark Prosecution.  

– LEGAL500: The ‘highly qualified’ team at TOBAR ZVS SPINGARN specializes in trade mark registration and enforcement matters for both domestic and international clients…”   “Clients recommend Alfonso Rivera Canales, who heads the practice”.

In addition, in the prestigious publicationCHAMBERS LATIN AMERICA, 2018,our Firm is ranked among the best in this specialty and make the following comment regarding the Head of the Unit:  The “very valuable” Alfonso Rivera of Tobar ZVS Spingarn is endorsed by clients as “a diligent and excellent lawyer who has an international insight and understands the client’s needs.”  They add: “He stays in close contact and is quick to respond.”

These rankings commit us to keep doing our best effort to offer the highest quality service to our clients.  

We are the best option to meet your IP requirements!

The President of Ecuador issued Decree Nr. 356 in April 3, 2018, creating the NATIONAL SERVICE OF INTELLECTUAL RIGHTS (“SENADI”) as a technical entity attached to the Secretary of Higher Education, Science and Innovation. This entity will replace the Ecuadorian Institute of Intellectual Property (“IEPI”) created In 1998.

The SENADI is the local authority competent in all matters related to intellectual property, and will take over the regulation, management and control of the Intellectual Property rights pursuant to the Organic Code of the Social Economy of Knowledge, Creativity and Innovation and other regulations of legal order.

It will provide services for the acquisition and exercise of the intellectual property, as well as the protection of traditional knowledge.

FUNCTIONS

Among its responsibilities are the following functions:

1. To protect and defend intellectual rights, to organize and manage the information about the registration of all kinds of intellectual property rights.

2. To conduct the procedures and to resolve about the granting or refusal of the registration of industrial property rights for patents, utility models, industrial designs, trademarks, slogans, commercial names, trade dresses, geographical indications, and others.

3. To conduct the procedures for the granting and registration of the rights over new plant breeders’ rights and to manage the deposit of live samples.

4. To guaranty, within the range of its competence, the acquisition and exercising of the intellectual property rights.

5. To make use of its faculties of regulation by means of issuance of technical regulations in this field, management and control of the intellectual rights and traditional knowledge.

6. To make, ex-officio or upon request of a party, inspections, monitoring and punishment functions.

7. To process and resolve the oppositions that are filed in connection with the registration of intellectual property rights.

8. To set the official fees and charges for the services rendered by the entity responsible for the management of intellectual property rights and the traditional knowledge.

Organization:

The General Director will represent the entity. The head of the Secretary of Higher Education, Science, Technology and Innovation will appoint him. The Committee of this attached entity of Intellectual Rights will be made of by at least six members. The IEPI Director (a. i.) shall continue in charge of the institution until the new authority is appointed. All the IEPI employees with appointments will become part of the SENADI.

General Provision:

All the rest of competences, attributions, functions, among others, that were of the competence of the Ecuadorian Institute of Intellectual Property (IEPI) as of this date shall be undertaken by the SENADI.

Transitory Provisions:

The organic structure of the IEPI will continue in force until the new organic structure of the SENAI is approved.

Final Provision:

The corresponding institutions shall comply with the provisions in this Decree within a 180 days’ term.

Intellectual Property Rights (IPRs) are intangible assets that may be subject of assignment contracts, authorization of use or license contracts, among others. Since the enforcement of the Organic Economy of Knowledge, Creativity and Innovation Code (COESCCI), the registration of this type of contracts is mandatory for them to take effect.

Accordingly:

• The registration of the contract before the National Authority of IPRs, currently SENADI[1] becomes a solemnity for its enforcement and a requirement for its validity;
• The contract must be in writing to proceed with the registration;
• Ownership of IPRs is not transferred until the contract is registered;
• The legal effects of these contracts begin with the registration. Therefore, lack of this formality will result in consequences for the parties, such as the following:
• The Licensee will not be able to prove the authorization of use provided by the owner of the IPRs (Licenser) and, therefore, could not enforce its rights.
• Within non-use cancellation actions against trademarks, the license agreement could not be used as evidence of use;
• It would not be possible to make tax deductions for the payment of royalties for the use of IPRs before the tax authority.

Consequently, the compliance with the registration of this type of contracts makes the contract enforceable for both parties in terms of their obligations and rights, as well as for third parties in terms of its effects.

[1] National Service of Intellectual Rights.