Colombia: Why a Robust Patent System is Leading to Litigation Wins

In summary

This article presents a general approach to understanding patent litigation in Colombia, giving insight into how the jurisdiction and competence works and discussing other key aspects regarding patent enforcement, including preliminary actions allowed by the procedural code and the stages and timing of infringement actions, among other things.

Discussion points

• Jurisdiction and competence over infringement
• Award of damages
• Judicial injunctions
• Pre-litigation evidence request
• Stages within the patent infringement process
• Bifurcated path between infringement and invalidity
• Doctrine of equivalents and prosecution history estoppel

Referenced in this article

• Colombian Criminal Code
• Colombian Procedural Code
• Ericsson v Apple
• Telemetrik v Excelec

Colombia is a World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) standard country and Patent Cooperation Treaty member, with a post-grant opposition patent system and an absolute novelty standard, allowing patents in all fields of technology after a substantial examination is carried out. Granted patents within the fields of mechanics, software-implemented inventions, telecommunications and pharma, among others, are fully enforceable before Colombian criminal and civil courts, with a separate path for infringement and validity.

Colombian patents do not grant their holders the right to carry out the invention. Instead, they grant the right to prevent third parties without the holder’s consent from manufacturing, offering for sale, selling, importing for any purpose, or using the patented product, process or product obtained directly through a patented process.

Therefore, any person holding Colombian patent rights has legal standing against any person infringing their right or against those performing acts that manifest the imminence of an infringement. In the case of co-ownership of a patent right, any of the co-owners may bring an action related to patent infringement without the consent of the others being necessary, unless otherwise agreed between the co-owners.

Although provisional protection rights do not exist for pending patents and the applicant does not have legal standing to initiate patent infringement actions or preliminary injunctions in such instances, as soon as the patent is granted, any legal action taken towards infringement would allow the patent holder to claim damages as from the publication date of the patent application.

Patent infringement actions are barred after two years from the date on which the owner became aware of the infringement or five years from the date on which the infringement was last committed.

Jurisdiction and competence over infringement

Infringement actions might be sought before criminal or civil courts. However, criminal actions for patent infringement are rare and limited to anticounterfeiting goods, especially when it may represent a danger for human or animal health.

For civil actions, patent holders may choose between the ordinary courts of the circuit, where infringement takes place, or the ordinary circuits where the defendant is domiciled or incorporated. In addition, as of 2012, the Colombian Patent Office was given preferred national jurisdiction for infringement actions associated with industrial property rights through an independent judicial branch. In any case, regardless of the preferred jurisdiction chosen by the plaintiff, infringement procedures are essentially of oral nature in double instance procedures, and appeal remedies take place before a superior tribunal.

The Colombian Patent Office’s judicial branch (CPOJB) is an independent branch of the Patent Office. While the latter takes care of patent prosecution on an administrative level, the CPOJB has public officials who are, by all means, judges who must abide by the procedural rules in the same manner as civil judges do. The difference between the CPOJB and ordinary civil judges is that the latter have residual jurisdiction, whereas the CPOJB ones only know about unfair competition actions and industrial property infringement. None of the Colombian judges, either ordinary or from the CPOJB, has a technical background, but it is fair to say that the CPOJB is the closest to a specialised jurisdiction for industrial property affairs.

The only forum shopping with respect to patent infringement actions is that allowing a choice between the CPOJB and civil circuit judges. However, it is not possible to choose a particular judge, because once an action is filed, the case is randomly distributed among the judges (in Bogotá alone, there are more than 50 civil circuit judges).

Award of damages

Courts may award damages to the patent holder as monetary compensation for patent infringement. To calculate those, Colombian legislation establishes the following criteria:

• the consequential damage and the loss of profits suffered by the rights holder as the result of the infringement;
• the amount of the profits earned by the infringer as a result of the infringing acts; and
• the price that the infringer would have paid for a contractual licence, considering the market value of the rights infringed and the contractual licences that have already been granted.

However, compensation shall only proceed with respect to the subject matter covered by the granted patent and shall be calculated based on the exploitation carried out by the defendant.

Furthermore, as previously mentioned, the patent holder may request the recognition of damages for the unauthorised use of its patent during the period between the application’s publication in the gazette for industrial property matters of the Colombian Patent Office and the date on which the granting resolution is issued.

Judicial injunctions

Colombian legislation and practice provide patent holders with the possibility to obtain injunctive relief. In that sense, judicial injunctions seek to prevent infringement from occurring, to avoid consequences when it has already occurred or continues to occur, to obtain or preserve evidence to further file a complaint on the merits, and to ensure the compensation of damages.

With the appropriate technical evidence, it is possible to request and obtain preliminary injunctions either ex parte or inter partes. Nevertheless, for ex parte procedures, if the alleged infringer becomes aware of the existence of an ex parte process, it may request the court to switch procedures to inter partes, so that both parties are heard before a decision over injunction is made.

Local provisions comprise a non-exhaustive list of injunctions, including:

• the immediate halt of the acts constituting the alleged infringement;
• the removal of the products resulting from the alleged infringement, including the containers, packaging, labels, printed or advertisements or other materials, as well as the materials and means that predominantly served to commit the infringement;
• the halt of the import or export of the products, materials or means that predominantly served to commit the infringement;
• the placement of a bond by the alleged infringer; or
• the temporary closure of the defendant’s or respondent’s establishment when necessary to prevent the continuation or repetition of the alleged infringement.

However, the petitioner or the court may request or declare any other measure it deems appropriate.

The scope of the injunction will depend to a great extent on the way in which it is requested by the petitioner. These are usually requested in a very broad manner, so that they cover all existing and future products containing the patented product or process, and all forms of use, sale offerings, commercialisation, imports and exports, by any physical or digital means and by any natural or legal person, whether a current or future distributor or any other third party. Moreover, courts may issue an injunction as requested by the petitioner or may tailor it as appropriate.

The purpose of the injunction is to avoid the continuation of the alleged infringement of the patent, so that both the court ex officio or the petitioner may request the extension of its scope at any time, covering new channels or third parties identified during the execution process of the injunction order.

The sine qua non requirements for a court to grant an injunction are:

• the existence of an allegedly infringed right (fumus bonis iuris);
• the reasonable evidence of existence of the infringement or imminence of the infringement; and
• the fact that not having the injunction may result in greater harm or damage to the patent holder (periculum in mora).

Additionally, courts may only order the injunction if decreeing it is necessary to avoid the occurrence of greater damage or harm generated by the time a final decision on the merits may take place and it does not cause an unfair and disproportionate affectation of rights, considering the benefit for the patent holder but also the effect it would have on other persons or the community itself.

Failure to comply with a court order (such as an injunction) is a crime under the Colombian Criminal Code that can lead to imprisonment for up to four years. Colombian criminal law applies to both nationals and foreigners who commit a crime in Colombia. Therefore, proceedings may be initiated against the legal representative of the company, the distributor and any third party performing infringing acts.

Additionally, if the preliminary injunction was executed ex parte, the petitioner must prove that it filed an infringement action within 10 days of the injunction’s execution. Otherwise, the court will lift the measure and impose the payment of damages to the petitioner.

It is difficult to predict the length of a preliminary injunction process starting from its filing until its issuance, including any appeal. However, common practice suggests a six-month term as a reasonable period for a first instance decision and approximately four additional months to decide an appeal, as it happened in the Ericsson v Apple infringement case. In such proceedings, taking an average of eight months, 13 different alleged standard essential patents (SEPs) related to 4G and 5G technology were brought before 12 different courts simultaneously, including two preliminary injunction requests filed before the CPOJB, and 11 before ordinary civil courts. As of the standard of evidence required for the issuance of a preliminary injunction, only one of the civil courts decreed a preliminary injunction against Apple, but the tribunal revoked this decision when deciding the appeal, mainly due to a lack of summary evidence on the actual infringement. Some of the decisions to deny the preliminary injunction were appealed by the plaintiff and sustained by the tribunal, essentially for the same reasons. What became clear is that even for SEPs, the evidentiary benchmark is the same as for ordinary patents, meaning that evidence of an actual infringement of a claim must be provided to eventually obtain a preliminary injunction.

Pre-litigation evidence request

It is the plaintiff’s obligation to provide evidence proving the existence of the infringement that gave rise to the complaint. However, our internal provisions consider the possibility for the patent owner to request pre-litigation evidence to gather the necessary evidence prior to the filing of the infringement lawsuit. The evidence to be collected may consist of the interrogation of the alleged infringer, statements regarding the authorship, the scope and content of a document, the disclosure of documents and movable property, witness declarations and inspections by the court of documents, places, objects and persons. The petitioner of the pre-litigation evidence decree may file its request before the CPOJB or the civil courts.

Stages within the patent infringement process

Judicial proceedings are of a ‘rule-bound’ nature, meaning that they have stages that must follow the order and timing established by the procedural code. A stage does not begin until the previous stage has been concluded.

Infringement proceedings, as mentioned above, have two instances: the first one being before the ordinary courts of the circuit or the CPOJB, at the patentee’s choice, and the second one occurring before the superior tribunal.

The first instance starts with the filing of the infringement action. If the document is filed in due form and complies with all the formalities, it is admitted by the judge between approximately one and three months after the filing. Otherwise, the judge issues an order requesting the correction of formal errors or submission of missing documents. The alleged infringer may file its response within 20 business days of the notification of the action’s admission.

Once the action is admitted, the judge sets a date for the initial hearing in which the facts are settled, conciliation between the parties is promoted and all evidence is decreed and performed if possible. If all evidence is settled, the judge grants 20 minutes for each party to present their closing arguments orally. Upon request of one or both parties, the judge may grant more time. After the parties have been heard, the judge issues the ruling. When some evidence could not be presented during the initial hearing, such as technical expertise or judicial inspections, the judge will set a date for the final hearing, where the remaining evidence must be settled, the parties present their closing arguments and the judge issues a ruling orally during the hearing or in writing within 10 working days of the hearing. The first instance may not last more than one year after admission of the infringement action.

The second instance starts with the filing of an appeal, which must precisely contain and present all the arguments. If the ruling is issued during one of the hearings, the appellant must file the appeal orally immediately after hearing the decision. If the ruling is issued in writing, the appellant must file the appeal within three working days of the ruling’s notification.

The appeal filed before the first instance judge must contain the arguments in a concrete and precise manner to be formally accepted, but the grounds of the remedy shall be sustained before the judge of the second instance.

In principle, the second instance process may not last more than six months (extendable for six additional months by the judge) from the time the tribunal receives the file. However, given that Colombia is a member of the Andean Community of Nations and as matters related to industrial property are governed by the norms dictated within the Community framework, the national judge cannot issue a final judgment without the existence of a prejudicial interpretation issued by the Andean Court with respect to the Andean norms involved in the matter under discussion. Therefore, the second instance process is adjourned for the time it takes to request and obtain the mandatory preliminary interpretation, which is approximately six months. The Andean Court recently decided to apply stare decisis, according to which national judges are not obliged to request a preliminary interpretation when the same matter has already been analysed and clarified in previous interpretations, avoiding the need to adjourn the judicial process in such cases.

Bifurcated path between infringement and invalidity

Patent infringement actions and patent invalidity actions are independent and need to be filed before different authorities. While infringement actions are filed against the alleged infringer before civil courts, invalidity actions are filed before administrative courts. Parties to each action are also different. Whereas civil actions happen between the patent holder and the alleged infringer, invalidity actions need to be filed against the Colombian Patent Office for having granted an alleged invalid patent, with the patent holder being an interested third party to the case. According to the above, invalidity as such would not provide a suitable defence against infringement allegations. It may, however, help as a persuasive tool against inter-party preliminary injunction procedures.

Until 25 January 2022, patent invalidity actions were single instance procedures filed before the Council of State, which is the highest judicial authority for administrative affairs. However, from that date onwards, invalidity actions are now filed before administrative tribunals at the first instance, and its decision is subject to appeal before the Council of State.

Doctrine of equivalents and prosecution history estoppel

A general rule for Colombian courts is that direct infringement is demonstrated by a literal interpretation of the claims. Infringement by equivalence is not expressly contemplated in the law, but it is not expressly excluded either, meaning that courts are free to perform their claim construction analysis according to the evidence of the case. It was not until the recent case of Telemetrik v Excelec that courts started to apply the doctrine of equivalents within the claim analysis in patent infringement actions. In this case, the Andean Court set the first precedent with respect to the applicability of the doctrine of equivalents in the Andean Community framework by stating that the judge may, if they so consider, make an equivalence assessment with respect to the elements of the allegedly infringing product or process. For this purpose, the Andean Court suggests applying the test of the triple substantial identity, which consists of determining whether the elements of the allegedly infringing product or process perform the same function, operate in the same way and accomplish the same technical result as the elements of the claim against which they are compared. In addition, the Andean Court of Justice also considered it is valid to analyse the prosecution history of the patent application and its narrowing amendments and limitations, as a limitation for the application of the doctrine of equivalence, providing a precedent for a file-wrapper estoppel. Based on such interpretation, the second instance judge in the Telemetrik v Excelec case carried out the claim construction analysis by applying the triple substantial identity test to conclude that there was no literal infringement or infringement by equivalence. Moreover, the tribunal also established that even if the result of the test would have shown equivalence, the prosecution history of the patent would void the possibility to apply the doctrine.

What is clear under these considerations is that Colombia does not only grant robust patents in all fields of technology, but also offers in parallel an effective enforcement of such patents before courts, providing both plaintiff and defendant with due process and challenge before superior courts with reasonable timelines.