Wednesday, June 21 2023   \  Published by OMC Abogados.

How to protect our invention from misuse?

How to protect our invention from misuse?

One of the main and most important rights granted to an owner when patenting an invention is the exclusivity over it.

On the other hand, article 52 of Decision 486 establishes the following: "The patent grants the right to prevent third parties from performing any of the following acts without consent.

a) when the patent claims a product:

(i) making the product;

ii) offering for sale, selling or using the product; or importing it for any of these purposes; and,

b) where the patent claims a process:

(i) using the process; or

(ii) to perform any of the acts indicated in subparagraph (a) with respect to a product obtained directly by means of the process."

In addition, Article 51 establishes that "the scope of protection conferred by the patent shall be determined by the wording of the claims, and that the description and drawings, or if applicable, the biological material deposited1, shall serve to interpret them".

According to articles 238 to 244 of Decision 486 of the Andean Community, it is stated that the patent holder may initiate an infringement action, through a complaint, against a third party that does not have the due authorization to use or exploit a patented invention, furthermore, article 99 of Legislative Decree 1075 establishes what said complaint must contain. Article 246 of Decision 486 establishes that Indecopi may be requested to cease the infringing acts, an indemnity for damages, the withdrawal from the market of the products resulting from the infringement, the prohibition of importation or exportation of these products and the issuance of precautionary measures.

Now, in cases of infringement, the authority may impose sanctions in two ways, a warning or a fine of up to 150 UIT. According to Article 120 of Legislative Decree 1075, in case the actual illicit profit obtained by the accused is higher than 75 UIT, the fine may be 20% of the sales or gross income received from the infringing activity. In addition, among other criteria, the authority will take into account the procedural conduct of the defendant and recidivism, which is considered an aggravating circumstance.

An example is the case of the utility model "Calibrators for shotcrete and calibrator holder". The owner, Saul Jenaro Párraga Orosco (Peru), filed an action for infringement of industrial property rights against Elizabeth Mendizabal de Ricra, who sells construction and wood products, her main clients being companies in the mining sector. She had been reproducing and commercializing without authorization the utility model through the business called "Centauro- Madera para la Minería" (Centauro - Wood for Mining). The plaintiff requested, among other measures, the issuance of precautionary measures of immobilization, confiscation and cessation of use of the products that are the subject of the complaint, the performance of an inspection, in addition to the imposition of a fine of 150 UIT.

Elizabeth Mendizabal de Ricra acquitted the transfer of the action pointing out that they manufactured the calibrators years before Saul Jenaro. In 2010 she designed, at the request of Pan American Silver Huaron, a wooden caliper of 1 foot in diameter and 2 feet long, cut at a 45° angle and embedded with a 2 or 3 inch headless nail in order to solve a shocret thickness measurement problem.

On the other hand, it alleged that the utility model did not comply with the novelty requirement, not only requested the nullity of patent MU194 but also that the precautionary measures dictated against it be lifted, affirming that it does not commercialize gauge-holders.

By Resolution N° 000077-2021/CIN-INDECOPI, the Commission of Inventions and New Technologies declared the infringement action filed by Saul Jenaro Párraga Orosco unfounded, considering the following: -

The calibrator manufactured and marketed by Mrs. Mendizábal has all the characteristics of the calibrator defined by claim 12. -

However, Mr. Párraga failed to demonstrate that Mrs. Mendizábal also manufactures and/or markets a caliper holder, which constitutes an instrument that claim 1 presents simultaneously with the caliper. Therefore, it is not possible to conclude that the mere exploitation of the calibrator under analysis infringes the scope of protection of said claim. -

From the protected claim sheet, the importance of the calibrator holder of claim 1 is evident, since the dependent claims 2, 4 and 5 contemplate preferred characteristics of such calibrator holder included in the main claim. -

It was not proved that Mrs. Mendizábal has manufactured and/or marketed instruments that comply with similar function, manner and result as the calibrator-holder in allusion, moreover, the existence of an infringement by equivalence is ruled out.

Saul Jenaro Párraga Orosco filed an appeal stating that the Commission of Inventions and New Technologies had incurred in an improper reasoning, since it left his right of exclusivity unprotected despite the fact that he proved that the calibrators manufactured and marketed by the defendant had the same characteristics as his invention. Likewise, he alleged that a patent cannot be limited to the literal scope of protection of the elements that constitute claim 1 and that it was not appropriate to declare his complaint unfounded just because he did not prove that the defendant also reproduced a caliper-holder.

Elizabeth Mendizabal de Ricra acquitted the transfer of the appeal stating, among other points, that she agrees with the decision of the first instance.

Finally, the Specialized Intellectual Property chamber, by Resolution No. 0233-2022/TPI-INDECOPI, revoked Resolution No. 77-2021/CIN-INDECOPI of the first instance, and declared the action for infringement of industrial property rights well founded with respect to claim 1 filed by Saul Jenaro Párraga Orosco against Elizabeth Mendizábal de Ricra and prohibited her manufacturing, distributing, offering for sale and commercializing the calibrator, as well as to immobilize all the units of calibrator finished or in production and imposed a fine of one (6.17) UIT to the defendant.

In order to issue this pronouncement, the Chamber took into consideration the following: -

By virtue of the evidentiary means offered, it noted that Resolution No. 77-2021/CIN -INDECOPI did not incur in a defect of motivation. -

In the comparative examination between the calibrator (D2) used by the defendant and the device registered with patent No. 1194 (D1), although D1 includes a calibrator and a calibrator holder and D2 does not include a calibrator holder, with the reproduction of the calibrator is sufficient to determine the infringement of the utility model patent, due to the fact that in the Patentability Examination (ESR 74-2018) that opined for the patentability of claim 1, in the novelty analysis, only the comparative analysis with respect to the calibrator was performed. 

The calibrator holder is complementary in claim 1, therefore, reproducing the calibrator infringes claim 1 of the utility model patent with Title No. 1194. 

Although the calibrator holder has technical advantages, it does not affect that by itself the calibrator described in claim 1 has novelty and technical advantage according to the patentability examination ESR 74-2018, being valid to make the contrast of the infringement only with the calibrator.

From the above, we can conclude that if the holder of the utility model patent had only considered the decision of the first instance of the Patent Office and had not appealed correctly as he did, his rights would have been affected and he would not have obtained a reasonable decision by the second instance, where the Chamber declared his complaint well founded and imposed a sanction to the defendant.

In this sense, the second instance decision was correct, because the Chamber did not limit itself to evaluate claim 1 and the importance of the calibrator holder, but took into account that both devices had the same characteristics and that the examination of patentability was with respect to the calibrator, so that, being similar to the one reproduced by the defendant, it could finally be determined that it was infringing the industrial property rights of the holder of the utility model registration.

Author: Antonella Gutiérrez 

IP Lawyer Law firm: OMC Abogados & Consultores

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