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.

The Ecuadorian Service of Intellectual Property, called citizens from July 25th to September 3rd 2018, to contribute criteria regarding the draft regulations which implement the Ecuadorian Intellectual Property Law. Afterwards working sessions will take place to discuss the proposals received.

The draft regulations to be discussed are the following:

1. General regulation of knowledge management
2. Regulation of copyrights and related rights
3. Regulation of collective management societies
4. Regulation of patents, utility models and industrial designs
5. Regulation of distinctive signs
6. Regulation of plant varieties
7. Regulation of traditional knowledge
8. Regulation on procedures for the enforcement of intellectual property rights

In our opinion, Ecuadorian IP Law does not ensure an effective protection of intellectual property rights, causing harm to their holders and creators. Our National IP Law also includes standards, which are against the Constitution. On the one hand, this law declares intellectual property as one of public domain exceptions, although it is against “rights of freedom” and even though, the Constitution protects “all forms of property”, that also includes intellectual property. On the other hand, the IP Law wrongly considers intellectual property rights such as a second-category of rights, since they are subordinated to others. These and other issues are contrary to the concept of intellectual property, as well as, the holders and creators’ interests.

Due to the above, to reform the IP Law is urgently needed. In any case, we hope that the issuance of such regulations, enables the competent authority to clarify relevant topics that affect intellectual property rights and improving their protection.

Our Law Firm has contributed with criteria both substantive and procedural, relating the aforementioned draft regulations.

Our Partner and Head of the IP Unit of the Firm was one of the invited panelists in the IP AND SPORTS – REACH FOR GOLD event organized by the Embassy of the United States in Ecuador, on the occasion of the World Intellectual Property Day.

Alfonso Rivera’s lecture addressed the issue of “Broadcasting of Sporting Events: the violation of rights on the Internet. Challenges to fight it”.

With the lecture given by our partner Alfonso Rivera, on The Impact of Blockchain on Copyright, our firm was present at the II INTERNATIONAL SEMINAR ON IR “Challenges in the Context of the Andean Integration Process”, organized by the Court of Justice of the Andean Community, International University of Ecuador, and the Ecuadorian Association of Intellectual Property (AEPI)