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.

With a Resolution in the Official Registry of September 13, 2018 were issued the Regulations of the Coercive Procedure of the National Intellectual Rights’ Services – NIRS (SENADI in Spanish), under the following considerations:

 The Regulations establishes a framework for the exercise of the coercive capacity for the collection and recovery of amounts contained in economic obligations resulting in its favor, usually for unpaid fees or fines.

 It is applicable for those who develop activities related with intellectual property that may have pending economic obligations in favor of the NIRS.

 The coercive proceeding is started base don a collection order issued by the competent authority, which has the implicit faculty to proceed to the coercive exercise.

 From the notification of the collection order, the coercive proceeding may only be suspended if the obligation had been paid, if payment facilities had been granted or by court order.

 Interests and surcharges in the obligations will calculated based on the highest annual interest rate allowed by the Central Bank as of the date of liquidation of the obligation. The interest will be effective from the following day from the issuance of the collection order. The filing of administrative action shall not suspend the generation of interests of the obligation.

 The authority issuing the collection order will be able to grant payment facilities, upon the request of the debtor.

o The request of payment facilities shall contain the offer to immediately pay at least 20% of the total obligation, the way that the balance will be paid and indicate the guaranty for the outstanding balance

o Payment facilities may be agreed to only before the auction stage of the assets seized.

• The notice with the collection order will be personally served to the debtor. When it should not be possible to personally notify, it will be made with two written notices delivered at the latest domicile address indicated by the debtor.

• The notices of the proceeding will be informed to the coerced debtor by e-mail, to the domicile and/or digital legal POBox indicated in the administrative proceeding that generated the obligation..

• The executive body shall issue the immediate payment order including precautionary measures and shall order to each of the obligors to pay or deliver goods within a three (3) days’ term from the following day of the notification.

• Within the precautionary measures, the executive body will be able to order to withhold funds or deposits that the obligor has in the financial system or the seizure of its assets.

• Coercive proceedings with payment orders issued before the entering into effect of the Regulations shall be processed pursuant to the stipulations therein, provided that are the most favorable for the obligor and shall facilitate the collection of dues.

• In proceedings with payment orders issued before the entering into effect of the Regulations the due date for the voluntary payment shall be verified.

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)