Peruvian patent litigation on infringement and invalidation: A sui generis case of bifurcation

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Guest post by Diego F. Ortega*

The Andean Community is the result of the seeking of the balanced and harmonious development of Bolivia, Colombia, Ecuador and Peru, which in May 26, 1969 signed the Cartagena Agreement, laying the groundwork for the creation of a subregional community initially known as Andean Pact and later renamed as Andean Community. In order to achieve the said objective, the Andean Community promotes a continuous process of integration and economic and social cooperation. In particular, this process of integration involves the need of having common rules as to matters that foster the unification of the market, such as industrial property rights.

The industrial property system within the Andean Community was established by the “Decision 486”, which aims to guarantee a rigorous scrutiny as to the fulfillment of the requirements needed for the granting of a patent. Thus, Andean Community does not provide only for the mandatory performance of a substantive examination carried out by the national patent authorities of its Member Countries, but also for mechanisms which allow third parties to prove that an invention does not meet the legal requirements, seeking the denial of the patent (through a pre-grant opposition request) or, if the patent is granted, its revocation (through an invalidation request).

On the other hand, the exclusivity which is conferred by a patent may be safeguarded through the right of patent holders to bring lawsuits for infringement before their competent authorities.

It should be noted that the Andean legislation does not establish , and the Member Countries are free to assign such power whether to judicial or administrative bodies.

In the particular case of Peru, both, cases of invalidation and infringement, may be reviewed at an administrative level, which certainly provides an appreciable celerity to the solution of these disputes (which may not take more than 360 working days including both first and second instance). Indeed, although the ordinary judicial system constitutes an alternative path since 2009, it takes four years on average counting first and second instance, if not more.

Moreover, cases of administrative invalidation and infringement are sought by the Peruvian Patent Office (Directorate of Inventions and New Technologies, a body belonging to the National Institute for the Defense of Competition and the Protection of the Intellectual Property – INDECOPI), which means that there is no lack of technical expertise, which is mostly required in the decision-.

However, the referred system has some limitations, because both administrative proceedings can only be prosecuted separately. Thereby, a patent invalidation defense cannot be admitted within the infringement , so if the defendant considers that the patent which supports the lawsuit does not comply with one or more legal requirements, he or she will only be able to file an independent invalidation request. As it may be seen, this is a sui generis case of bifurcated litigation where it is the same authority the one that will decide both cases.

Since it is very frequent that an infringement case is processed earlier than the filing of the corresponding invalidation, it is theoretically valid to assert that a successful ruling on an invalidation request could be too in front of an anticipated unfavorable final judgment for the defendant, where the latter has been fully implemented. On this respect, it should be said that according to Peruvian legislation, the retroactive effect of a patent revocation will not affect those infringement rulings which had been executed before such revocation.

The Peruvian Patent Office has nevertheless found some ways to mitigate the above-said problem. Thus, when an invalidation case is filed not much long after the beginning of the infringement proceeding the Office procures to issue the corresponding decisions in both cases on the same date, so if the invalidation case is successful, then a subsequent dismissal of the infringement action is issued. This measure tends to seek the issuance of non-contradictory decisions and is possible only because it is the same administration the one that rules on both cases.

Regardless of the measure adopted by the Peruvian Patent Office it is still probable that, due to very particular reasons, this de facto solution may not work in all cases. In this sense, it would be very positive for the Andean system to be modified in such a way that a defense of invalidation may be allowed within the infringement proceeding. This de jure solution would let the Peruvian administration to issue more coherent decisions, which along with the acknowledged celerity and high degree of technicality, would confer greater strength to its industrial property system.

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*Diego F. Ortega LL.M. in Intellectual Property and Competition Law by the Munich Intellectual Property Law Center (Germany). MBA by ESAN University (Peru). Lawyer by Universidad Nacional Federico Villarreal (Peru).

Professional practice in Patent and Design Law, as well as New Plant Varieties system and the protection of traditional knowledge and genetic resources. Since 2013, Technical Secretary at the Commission for Inventions and New Technologies of the National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI-Peru), having public management functions, including the support in the design of national intellectual property policies and the participation in negotiating rounds for international agreements, such as the Trans-Pacific Partnership (TPP).

e-mail: diegofrancoise.os@gmail.com

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