Overview Of Patents In El Salvador

Patent enforcement proceedings

1 What legal or administrative proceedings are available for

enforcing patent rights against an infringer? Are there specialised

courts in which a patent infringement lawsuit can or must be

brought?

Protection against patent infringement can be implemented by

executing administrative and judicial actions.

Administrative actions are based on the rights granted by the

Intellectual Property Law, which provides that the owner of a

patent can stop its unauthorised use by a third party. If the

patent was granted for a procedure, use of such patent comprises

manufacturing, sales, imports, storage and transit through the

country, plus prohibition to use the procedure. The limits to the

right of ownership are those mentioned in article 5 of the Paris

Convention: private use, scientific investigation, and

commercialisation of the patent once its term of protection has

lapsed.

The Intellectual Property Law provides an opposition procedure

enabling the filing of observations to the patentability

requirements of a new invention, within two months after

publication of the patent extract notice in the Official Gazette.

The applicant is granted the right to reply to any observations

made by third parties and after analysing both, the Patent Examiner

resolves whether or not the patent application moves to the

examination phase.

Judicial actions may be taken against patent infringement based

on the Intellectual Property Law and the Mercantile Code or based

on the Criminal Code.

Intellectual Property Law and Mercantile Code-based actions must

be filed before the Mercantile Courts in the Judicial District of

San Salvador or in a court with mercantile jurisdiction in other

districts. Criminal actions must be filed before the General

Attorney's Office and their prosecution is made before a

criminal court.

The registration of a patent can be cancelled by filing a

complaint before a Mercantile Court in the Judicial District of San

Salvador or in a court with mercantile jurisdiction in other

districts. Said cancellation action proceeds when it has been

granted to a person other than the legitimate owner of the patented

invention. The Intellectual Property Law also grants the legitimate

owner of a patent, legal actions to reivindicate it, if registered

by an unauthorised third party.

Unfair competition actions can also be initiated based on the

Commerce Code. The effect of such action is to obtain a injunctive

relief, such as a judicial order to cease and desist any

unauthorised patent use, make payment of damages, allow seizure of

any objects used in the production of the patent, set in motion the

reivindication of legal ownership over the patent, allow the

destruction of all objects used in the infringement and the

publication of the judicial verdict.

The Criminal Code provides that violation of patent rights is a

crime. Any person who, with industrial or commercial purposes and

without the consent of the legitimate owner of a patent,

manufactures, imports, offers or introduces into commerce objects

derived from the patent right can be punished with one to three

years' imprisonment.

2 What is the format of a patent infringement trial? To what

extent are documents, affidavits and live testimony relied on? Is

cross-examination of witnesses permitted? Are experts used? Are

disputed issues decided by a judge or a jury? How long does a trial

typically last?

The trial format for Commerce Code and Intellectual Property

Law-based actions related to patent registration annulment,

reivindication or unfair competition actions is as follows. A

complaint must be filed before the Mercantile Court or a Court with

mercantile jurisdiction. The complaint is examined for compliance

of formal requirements stated in the Civil Procedures Code. If all

formal requirements are fulfilled, the complaint is admitted. At

this stage the judge may request a judicial bail granted in favour

of the defendant to cover any damages caused, in the event the

plaintiff fails to sustain its claims. Salvadoran Law does not

establish how the bail should be calculated, hence its amount is

set under the judge's discretion. Preliminary injunction can be

requested in the complaint. Upon admission of the complaint, the

infringing party is served and granted three days to reply. Both

parties are granted eight days to file their evidence and

afterwards the judge issues the verdict.

The criminal trial is initiated by filing a complaint before the

Police or the Attorney General's Office. If the complaint is

filed before the Police, the document is sent to the Attorney

General's Office, as they are responsible for directing the

investigation, to be done by the Police. Upon conclusion of said

investigation, the Attorney General's Office requests a peace

judge to open the trial, a point at which preliminary injunctions

are executed, including seizure of all elements used to commit the

infringement. A hearing is held before the peace judge, during

which the parties can reach a settlement. If not, the judge decides

if the investigations made by the police under direction of the

Attorney General's Office resulted in sufficient evidence to

continue with the trial. A second hearing is made before an

instruction judge to determine the judicial relevance of the

evidence provided. A final hearing takes place before a third

judge, who will issue the final verdict, declaring the guilt or

innocence of the defendant. If the defendant is found guilty, the

penalty is of one to three years of imprisonment, which can be

substituted by other out of prison penalties and restraints.

3 What are the respective burdens of proof for establishing

infringement, invalidity, and unenforceability of a patent?

As in any trial, evidence is key to obtaining a favourable

verdict. Ownership over the patent must be evidenced in the trial,

by filing the patent registration procedure and the patent

description, claims and summary and drawings if applicable. Owing

to the nature of patents, it is also necessary to provide expert

opinions in the trial. The experts are proposed to the judge by the

intervening parties, and are instrumental in determining if the

product being made by an infringer does contain the patent

procedure.

In trials before a Mercantile Courts, the relevance of the

evidence is provided by the Civil Procedures Code and failure by

the judge to comply with the value set for each type of evidence

may result in violation of the law. For example, a document issued

by a public authority has more evidentiary weight than a private

document; an expert opinion has more weight than a testimony, and

so on. The trial is all made in written form and the dispute is

decided by a judge and not by a jury.

In trials before a Criminal Court, the judge may consider all

evidence provided and may provide each one with a value without any

legal restriction. Cross-examination, witnesses and expert opinions

are available and valued by the judge according to its best

criteria. The parties provide the experts. The dispute is decided

by a judge and not by a jury.

The estimated time for a trial to reach its final verdict before

a Mercantile Court is one year and before a Criminal Court, between

six months and a year. This estimate does not include the filing of

remedies by the parties, which increases the time it takes to reach

the verdict.

4 Who may sue for patent infringement? Under what conditions

can an accused infringer bring a lawsuit to obtain a judicial

ruling or declaration on the accusation?

According to section 164 of the Intellectual Property Law, only

the legitimate owner of a patent may request the annulment of a

patent registered by an unauthorised third party. Annulment based

on failure to comply with any legal requirements may be requested

by any interested party, any person who uses the patent in commerce

or by the attorney general. Additionally, a licensee may initiate

actions against the infringement of a patent, provided it has a

power of attorney to that regard. If not, the licensee must show

before the court that it gave notice of the infringement to the

legitimate...