Colombia is getting more patent friendly

International Business News  –  Latin American countries are often not a priority when it comes to strategically deploying global litigation activities to enforce patent rights. In 2022, however, the development of Colombian law emphasizes that the country is a country with an administrative and judicial system that favors patent rights and provides effective protection for patent assets.

The victory of standard essential patents

In a global lawsuit involving 5G telecommunications standard-essential patents (SEPs), Columbia Judge Ronald R. Ronald N. Orozco granted Ericsson a preliminary injunction in early July, barring Apple from importing, selling, promoting and advertising 5G-enabled devices such as the iPhone 12 and 13. The case was heavily covered by Colombian local and global trade media.

Colombia is the first country to issue a preliminary injunction in the global dispute between Ericsson and Apple. Although this is the first time a Colombian court has dealt with such a complex case, the case shows that Colombian judges will not shy away from making important decisions in important cases on the complex topic of patent law.

Colombian law supports discovery

In addition to the Ericsson case, it is also worth noting that Colombia, despite being a civil law country, also offers a wide range of discovery options. There is a saying that civil law countries are non-discovery jurisdictions. In contrast, Colombian law provides parties with ample opportunity to gather evidence through pre-trial discovery motions (on-site inspection, documentation, and deposit). In many cases, documents and testimony produced through these discovery mechanisms can be used in foreign litigation.

Discovery can often provide evidence against the opposing side’s position, and can even guide and facilitate a settlement before litigation begins. For example, in 2021 and 2022, at least 10 prima facie discovery motions (PDMs) have been granted by the judicial branch of the Colombian Chamber of Commerce and Industry (SIC). In these motions, patent owners of pharmaceuticals and agrochemicals require the presentation of marketing authorization application documents for the allegedly infringing products. These PDMs involve secondary patents such as formulation patents and patents on methods of obtaining active ingredients.

Requests for such evidence have been challenged, for example, by some claiming that it constituted unfair competition. However, in a recent SIC ruling, a generic drug company’s request for a preliminary injunction against a patent owner based on unfair competition claims was rejected. The SIC said that sending a letter asking for evidence of non-infringement did not constitute unfair competition. The plaintiffs in the case sought to block a patent owner’s request for production of evidence to provide a pharmacological profile of a product containing the patented ingredient. The patent owner needs this information to conduct a corresponding infringement assessment. In its ruling, the SIC stated that patent owners have the legal right to use all available discovery mechanisms to ensure compliance, even if such inquiries involve confidential documents.

Injunction and Presumption of Validity

For requests for preliminary injunctions related to patent infringement under Andean Community and Colombian law, in general, a plaintiff may file a request under an ex parte procedure that requires the plaintiff to demonstrate the possibility of infringement (such as a patent claim form and expert testimony of the infringing product) and Irreparable harm (such as undue delays in negotiating licenses, previous and ongoing refusals). A preliminary injunction also requires a bond. After the preliminary injunction is granted, the plaintiff must sue within 10 days. The defendant may file a reconsideration of the preliminary injunction, however, the defendant’s request for reconsideration will not suspend the execution or take effect of the injunction until a final decision has been made. If the plaintiff wins, a preliminary injunction usually becomes final.

In Colombia, the presumption of validity is very powerful. In infringement cases, invalidity often does not provide a valid defense. Colombia follows a bifurcated system similar to Germany and Brazil, whereby infringement and invalidation cases are handled by separate courts. Defendants seeking patent invalidation in infringement cases must file a separate action (invalidation action). Filing of such an invalidation action will not result in a stay of the infringement action.

In conclusion, Colombia is emerging as an advantageous jurisdiction for patent owners seeking to effectively defend their assets. Of course, the system relies on the efficient functioning of the Colombian Patent Office (CPO), which examines and grants patents. The CPO is an efficient institution, known in the region for fast and high-quality patent examinations.