Ricardo Mejia, Partner and Intellectual Property Director of Bufete Mejia & Asociados, recently shared some important information on patent enforcement proceedings in Honduras. See below for a selection of excerpts from Mejia’s article, which appeared in Getting the Deal Through – Patents 2013:
What legal or administrative proceedings are available for enforcing patent rights against an infringer?
The holder of a patent registration is entitled to file an infringement action before the competent court against any party who infringes its rights. It may also act against a party who is carrying out acts that may give grounds to presume an imminent infraction. In cases of co-ownership of a right, any of the co-owners may file an infringement action without seeking the consent of the other owners. A duly recorded licensee may also file suit for these reasons.
The above should be differentiated from a nullity action, which may be filed by anyone that considers itself the rightful owner of a patent and files suit against a third party who was able to secure a patent for the same object of protection. This action will expire after five years starting from the date of grant of patent, or two years starting from the date in which the invention had begun to be worked in the country, applying the term that expires later.
What is the format of a patent infringement trial?
A patent infringement action has three main stages: first, once a suit has been brought, it is served on the alleged infringer, who then has six working days to respond and bring a counterclaim; then the response is served on the plaintiff for allegations, and all evidence is analysed; and finally a decision is issued. This decision, issued by a first instance court, can be appealed before a court of appeals and then before the Honduran Supreme Court.
Under the general principles of Honduran law, it is the plaintiff who must prove all allegations and claims. Thus, a plaintiff in a patent litigation is required by law to prove the existence of the infringement. In this respect, the Honduran Industrial Property Law does not regulate the manner in which an infringement is to be proven. The Honduran Code of Civil Procedure is applied as a supplement to the Honduran Patent Law regulations, and under such Code the following proofs are allowed: documentary evidence; expert witnesses; judicial audit or inspections; and presumptions.
What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?
The Honduran Industrial Property Law grants patentees and their duly registered licensees the rights to the exclusive exploitation of the patented invention. Therefore, a patent gives the right to exclude others from making, using, offering for sale or importing the covered invention. In a patent infringement action, the plaintiff must prove the following:
- ownership or recorded license over a granted, valide and full in-force patent – generally, a certified copy of the ‘file wrapper’ of the patent prosecution is enough to prove these requirements. The validity of the patent may be challenged by the defendant;
- that someone is using, making, offering to sell or importing the patented invention – when a plaintiff claims infringement of a patented process, the defendant has the burden of proving the use of a different process other than the patented process; and
- use of the patented invention – only literal infringement is recognised. No doctrine of equivalence applies. The plaintiff must prove that the wording of the patent’s claim or claims covers the alleged infringing product or process. First, the plaintiff must define the scope of the approved claims. The Honduran Industrial Property Law and the courts have established that the span of the claims is determined by the wording of the claims, aided by the description and drawings.
Alternatively, what are the requirements necessary to make a non-infringement case?
Under the Honduran Patent Law, granted patents (for products or procedures) are valid until the contrary is proven in a court of law or in an administrative procedure for the nullity of the patent as previously indicated. One of the most common defenses in patent litigation in Honduras, both at a court or administrative level, is to attack the validity of the allegedly infringed patent. The grounds for doing so are as follows:
- the patent was granted in contravention of the provisions regarding the requirements and conditions for the grant of patents or registration of utility models and industrial designs (namely, the patent was granted to an invention that, according to the law, was non-patentable on absolute or relative grounds;
- the patent was granted in contravention of the law in effect at the time the patent or registration was granted;
- the patent application was abandoned during its prosecution; or
- the grant of patent was defective because of errors or serious oversight, or it was granted to a person not entitled to it.
What is the typical timetable/range of costs for a patent infringement lawsuit in trial and appellate courts?
Actions before the Patent Office, Higher and Highest Administrative Office (Superintendency of Intellectual Property) may last from 15 to 24 months. An initial resolution from the Patent Office can be expected within 12 months. A decision from the HIgher Administrative Office may take around four months, and a decision from the Highest Administrative Office takes an additional two to six months. A court action, either before the civil courts or the Contentious Administrative Court may last from two to three years.
Fees for the preparation and filing of a patent infringement lawsuit before the Patent Office or courts are around US$6,000. Additional fees and expenses (depending on the nature of the evidence submitted, translation costs when needed, expert witness charges) are highly variable.
What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?
Appeals to decisions rendered by the Patent Office go to the Higher Administrative Office and then to the Highest Administrative Office (Superintendency of Intellectual Property). The decision rendered by this Office puts an end to administrative procedures. The affected party may file suit before the Contentious Administrative Court against the decision rendered by this Office and request reversal of the decision and damages.
Appeals to decisions rendered by the civil courts go to the Circuit Court of Appeals and then to the Honduran Supreme Court.
To what extent can enforcement of a patent expose the patent owner to liability for a competitive violation, unfair competition or a business-related tort?
Please note that the Honduran Administrative Offices and courts generally consider that the use of a state-given right cannot constitute a violation of rights. Nevertheless, an action could theoretically be brought for activities falling outside the scope of a patent, such as non-competition agreements for products that are not covered by the claims, product-tying within that scope or unfair competition activities such as advertising that a product is better than an alternative for the sole reason of it having a patent.
Honduras joined the Patent Cooperation Treaty (PCT) in 2006. For more information on filing your patent in Honduras, visit our website.