mardi, juin 29, 2010

Ecuador: Intellectual Property Institute introduces exorbitant new fee regime

Intellectual Property Institute introduces exorbitant new fee regime

Contributed by Tobar & Bustamante Abogados


As of June 1 2010 the Intellectual Property Institute has increased the official fees that it charges for its services.

Distinctive signs

With regard to distinctive signs (ie, trademarks, trade names and slogans), the total cost for both applications and renewals has been raised from $82 to $116 – an increase of 41%. Furthermore, before June 1 2010 the fee to file an application was $54 and the fee payable for the issuance of the title – once the trademark has been awarded – $28. Following the changes there is no longer any requirement to pay for the issuance of the registration title: only a one-off fee of $116 is payable in order to initiate the procedure.

An unusually high fee for three-dimensional trademarks was fixed at $336. No explanation was given as to why the fee should be so much higher than that for other trademarks.

The official fee for filing oppositions is now between $80 and $100, which represents an increase of 25%.

Another fixed fee applies to the so-called 'well-known trademark declaration'. There is no legislation providing for a specific procedure to recognize well-known trademarks. Rather, in practice, this recognition has been granted as part of other procedures such as oppositions and administrative appeals. The fixed fee for this procedure is extremely high: the Intellectual Property Institute has set a fee ranging from $3,000 to $10,000.

Several questions arise from the establishment of this fee: how will the Intellectual Property Institute process well-known trademark declarations when no such procedure exists in law? What will happen to well-known trademark evidence filed in other types of procedure, and which can be used by the owner of the well-known mark in its defence – that is, does the Intellectual Property Institute also intend to charge this fee for such cases despite the fact that they are not established by the law?

Furthermore, a new rate has been created for the "procedure to renew a well-known trademark declaration". Since there is no specific procedure for making such a declaration, and therefore no expiry date for the declaration, how can there be a procedure to renew it? How can a fee be payable if there is no such procedure? The excessive level of the renewal fee should also be noted; between $3,000 and $10,000.

There appears to be no legal basis to charge fees for a well-known trademark declaration or for a renewal of such a declaration exists. Furthermore, the payable fees seem to be disproportionate.

Invention patents

The Intellectual Property Institute has also made drastic changes with regard to invention patents. The application fee has increased from $108 to $404 – an increase of 374%. The certificate issuance fee has increased from $54 to $204 – an increase of 378%. The cost of the patentability exam has also increased: the fee, which previously ranged from $54 to $266, has increased to between $196 and $964. A fee of between $196 and $964 was also introduced for new patentability exams carried out for changes in claims.

Overall, the official fees to register a patent in Ecuador will amount to between $806 and $1,572, depending on the fee determined for the patentability exam. Assuming the total cost of this process used to be between $216 and $428, the costs have increased by 370%.

As well as these costs, the costs of maintaining applications or registrations must be taken into account: before June 1 2010 these costs consisted of a one-off fee of $28 a year.
The table below shows the new costs regime.

Years from application date

Fee ($)

From date of application until the second year

104

From the second year until the seventh

148

From the seventh year until the 11th

228

From the 11th year until the 14th

320

From the 14th year until the 17th

428

From the 17th year until the 20th

572


The cost of filling oppositions has increased from $80 to $176.

The procedures to register utility model patents and industrial design patents are also subject to significant fee increases, although they have not yet reached the levels of the invention patent fees.

Certain other fees have also been increased. These changes have been questioned by many IP lawyers and some of these issues are already the subject of discussions with local authorities.

For further information on this topic please contact
Santiago R Bustamante at Tobar & Bustamante Abogados by telephone (+593 2 986 456), fax (+593 2 986 462) or email (sbustamante@tobarybustamante.com).