Tag Archives: Ruth Holguín

CorralRosales > Ruth Holguín

The exhaustion of Instances by the State: A Problem in Intellectual Property

Categories BlogENG Posted on Author admin Tags Ecuador, instances, Intellectual Property, Ruth Holguín, SENADI

The administrative authority and one or more private parties intervene in the vast majority of administrative procedures regarding Intellectual Property. Once this stage has been exhausted, resolutions issued by the National Intellectual Rights Service (SENADI) can be judicially challenged before the competent Administrative Contentious Court. The processes culminate with the sentence that agrees with one of the parties. With its execution, the mission of imparting justice is considered accomplished. However, the experience in intellectual property matters is different.

Once the client obtains a favorable ruling from the Contentious Administrative Court, SENADI usually files a cassation extraordinary appeal to prevent the execution of the Court’s ruling. This attitude is not justified because it is a dispute between private parties, in which the resources of the State are not compromised.

The competence of the aforementioned institution to appeal adverse decisions is not questioned, since we understand that it wants its criteria to prevail, however, it is necessary to consider that the filing of these appeals by SENADI is not always motivated to protect public interests.

In terms of intellectual property, there is no justification for SENADI in all cases to try to nullify the sentence so that its legal criteria prevail. With this attitude, state resources are wasted because the Supreme Court must allocate time to address these challenges. Worse still, in cases in which SENADI files an extraordinary protection action before the Constitutional Court.

It is very difficult for Intellectual Property clients to accept this behavior from the administrative authority, which seems to be destined to hinder the timely exercise of the corresponding rights. This reality is even worse in the case of patents, whose validity is 20 years from the filing of the application, since the administrative and judicial procedures can consume half of that time and in some cases the full term.

The justice system is saturated in Ecuador; responsibility, effective judicial protection and legal security do not go hand in hand with the principle of opportunity. The exhaustion of resources and actions by SENADI should not become the rule, since this causes the processes to be delayed, the execution of the sentences postponed and greater public and private resources spent.

Ruth Holguín
Associate at CorralRosales
ruth@corralrosales.com

The suspension of the administrative act on Intellectual Property

Categories BlogENG Posted on Author admin Tags Administrative act, Intellectual Property, Ruth Holguín, suspensión
administrative-act-intellectual-property-ruth-holguin

The suspension of the execution of an administrative act is an exceptional provision that can be issued by an administrative or judicial authority. It is a precautionary measure that proceeds only when the execution of the administrative act produces unrecoverable or very difficult remediation losses due to the violation of the rights of the entity being administered. The suspension means that the administrative act does not apply until there is a final resolution.

This figure has limited application in the area of ​​Intellectual Property, since to obtain the suspension of the administrative act in judicial headquarters; the entities being administered must demonstrate that, for example, the registration of a trademark or patent violates their rights; or, that the registration of a trademark was improperly canceled due to lack of use.

A more detailed analysis:

  1. An opposition to a trademark or patent application might be provided by law for the following reasons: lack of distinctiveness, risk of confusion or association, not meeting the requirements of patentability, etc.
  2. The Ecuadorian Intellectual Property Office denies the opposition and gives way to registration, so that the affected party can challenge that decision before the Contentious Administrative Court, requesting, in addition, the suspension of the act, because the affected party considers that its execution would violate its rights in an irreparable way.
  3. If the request is granted, registration of the trademark or patent is suspended. After the judicial process, which has a minimum duration of three years, the sentence is issued. For the purpose of this analysis, we assume that the administrative resolution is ratified, granting the registration and denying the opposition.

In this scenario, did leaving the applicant without the ownership of his registration for three years violate his rights?

This would be the main conflict that could cause the suspension of the execution of an administrative act in Intellectual Property.

What happens in practice?

The judicial authority generally does not accept the request for suspension of the administrative act because, although the existence of irremediable loss caused by the execution of the act can be demonstrated, the rights of the person who obtained the registration of the trademark or the patent are also at risk.

It must be considered that most conflicts over Intellectual Property derive from trilateral administrative procedures, in which the administrative authority and two interested or administered parties intervene. Therefore, the suspension of the administrative act in this branch is especially controversial and unusual.

In summary, the substance of the dispute is that the contentious-administrative judge must assess whether or not the suspension of the decision of the administrative authority applies, taking into account the losses that could be suffered by both; the party that achieved the registration of the trademark or patent and the other party that considers their rights affected by that registration as well. There will always be an important degree of subjectivity, but the judge must receive comprehensive and true information from the parties in conflict to form his or her judgment.

Additionally, the judge that resolves the suspension of the administrative act, until there is a final decision on the conflict, should have the possibility of requiring sufficient guarantees to respond for the losses that may arise from the suspension if the final decision ratifies the resolution of the administrative authority. A reform to improve the application of the law would be to demand that enough guarantee´s be determined – the judge himself should set its amount – to grant the suspension of the administrative act.

Ruth Holguín
Asociada Senior en CorralRosales
ruth@corralrosales.com