Patent Litigation

• Andean Community Decision 486 (substantive and procedural);
• The General Procedural Code (procedural rules for patent infringement matters); and
• The Code of Administrative Procedure and Administrative Litigation (procedural rules for patent invalidity matters).

Colombia is part of:

• the Andean Community;
• the World Intellectual Property Organization; and
• the World Trade Organization.

Andean Community law is self-executing and pre-empts domestic law. Particularly relevant for patent litigation are:

• Andean Community Decision 486; and
• the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights.

At an administrative prosecution level, the IP Division of the Superintendence of Industry and Commerce (SIC) is responsible for granting or rejecting patents. Judicial challenges of a SIC decision granting or rejecting a patent are reserved for contentious administrative judges of:

• the Administrative Tribunal of Cundinamarca at first instance; and
• the Council of State on appeal.

The foregoing jurisdiction also includes invalidity challenges.

As for patent assertion, infringement cases can be brought before:

• the Judicial Division of the SIC; or
• civil judges of:
• • the circuit at first instance;
  • tribunals on appeal; and
  • the Supreme Court of Justice on cassation.

Any of the foregoing domestic judges will necessarily interpret and apply patent law in their decisions. However, since patent law in Colombia is ultimately governed by Andean law, the only court with a final say on issues of Andean law (including substantive patent law and some procedural issues governed by Andean Community Decision 486) is the Andean Court of Justice (ACJ) in Quito. Normally, the ACJ will intervene with a binding interpretation on matters of Andean law before a second-instance proceeding is brought in Colombia.

Infringement and validity claims are decided in separate forums.

First-instance infringement cases can be decided:

• by the Judicial Division of the Superintendence of Industry and Commerce (SIC) or the civil circuit judges; and
• on appeal, by the civil chamber of the appropriate tribunal.

Invalidity cases are decided by:

• the Administrative Tribunal of Cundinamarca (first instance); and
• the Council of State (second instance).

The distinction above arises because, under Colombia’s Constitution and laws, administrative acts are presumed valid. Since patent grants are administrative acts, they are considered to be legal and enforceable unless they are overturned by a judge. As a result, only administrative judges have the authority to rule on patent validity and civil judges cannot assess it. Thus, it is extremely difficult to stay an infringement case (even a preliminary injunction) through an invalidity challenge.

A single judge.

A plaintiff can select between filing a patent infringement case before the SIC or a civil circuit court judge (but not both). Cases are assigned sequentially by a docketing office to judges and filtered based on workload. Therefore, a plaintiff cannot choose a specific judge to handle a case.

The owner and the exclusive or authorised licensee have standing. Although Andean Community Decision 486 does not specifically allow licensees to initiate infringement actions, standing has been accepted for:

• an exclusive licensee; and/or
• a non-exclusive licensee that is authorised by the owner.

Yes. Actions can be brought against a potential defendant that has no domicile or residence in Colombia (as long as the alleged act of infringement occurs in Colombia). However, service of notice can be an issue if the defendant has no presence in the country. In such cases, one must send a rogatory letter through the Ministry of Foreign Affairs, which can take several months or even years. Where the defendant has simply filed an IP application (eg, a patent or trademark application), service can be perfected through the attorney-of-record pursuant to a Code of Commerce provision.

Yes. A single action can be brought against multiple defendants in any of the following cases:

• The matters have the same cause;
• The matters have the same object;
• There is a relationship of dependence between the defendants; or
• The matters involve the same evidence.

However, joinder is not required under these circumstances and a plaintiff may bring separate actions against the defendants.

Yes, a third party may seek both a declaration of non-infringement and invalidity (before different judges). However, we are not aware of a declaration of non-infringement ever being sought as an independent or pre-emptive claim. Normally, a declaration of non-infringement is sought only as a defence.

• Product patents: Manufacture, offer for sale, sale, import or use.
• Procedure patents:
• Use of the procedure; or

Manufacture, offer for sale, sale, import or use of products obtained directly by the procedure.

In its interpretations of Andean Community Decision 486, the Andean Court of Justice (ACJ) has stated that patent rights grant the holder the ability to exclude third parties from exploiting the patented invention. This could leave the door open to proposing, before national judges or even the ACJ itself, other forms of infringement not explicitly contemplated by Andean regulations.

Infringement is determined through a judicial decision in which a judge will consider whether the allegedly infringing product or procedure is covered by one or more of the claims. Typically, a plaintiff will provide a claim chart validated by an expert and supported by additional evidence such as:

• documents;
• direct testimony and cross-examination of experts and witnesses;
• site inspections; and
• samples.

Yes – although not statutorily contemplated in Andean Community Decision 486, a 2022 binding interpretation from the Andean Court of Justice (Docket 475-IP-2019) recognised the nature and applicability of the doctrine of equivalents. In this regard, in 2023, the Bogotá Superior Tribunal (Docket 2018-29515-01), on appeal, applied the triple identity test under the doctrine of equivalents, asking whether an accused element of the infringing product:

• performed the same function, in the same way; and
• produced the same result.

While the court ultimately did not find infringement, it still considered the doctrine of equivalents in reaching its decision.

No.

• Preliminary injunctions may be requested:
• • before the complaint is filed;
  • simultaneously with it; or
  • at any point during the course of the proceedings.
• Prelitigation discovery motions are available to gather evidence prior to initiating an infringement action.

• Two years from the date on which the titleholder became aware of the infringement; or
• In any case, five years from the date on which the infringement was last committed.

Not necessarily. There are two ways to comply with admissibility requirements for an infringement complaint:

• attempting conciliation with the defendant before filing the complaint, in which case the defendant must be notified of the conciliation request; or
• requesting a preliminary injunction before or along with the complaint, in which case the defendant need not be notified.

Procedural requirements:

• Identifying the name, ID, domicile and email of the parties and attorneys (if known).
• Identifying the type of court.
• Listing the claims.
• Listing the facts.
• Listing the requested evidence and attaching the evidence in the power of the plaintiff.
• Making a sworn statement on the estimated amount associated to the complaint (if damages are sought).
• Including the legal basis for the infringement.

Substantive requirements:

• Demonstrating legal standing to sue.
• Identifying and demonstrating the infringing acts being committed by the defendant.
• Demonstrating that the infringing product/procedure falls within the scope of one or more of the claims.

Yes. Preliminary injunctions are an interim remedy that can be sought prior to or along with an infringement complaint. To obtain a preliminary injunction, the plaintiff must:

• demonstrate legal standing in the cause to sue;
• demonstrate the existence of the infringed right;
• present reasonable evidence of the infringement or its imminence (typically a claim chart validated by an expert);
• demonstrate periculum in mora;
• fully identify the infringing products; and
• post a bond fixed by the judge (typically 20% of the amount of the claims).

Only where a preliminary injunction is sought, in order to cover potential damages caused by the injunction.

In general, documents submitted without a request to maintain their confidentiality and a subsequent declaration of confidentiality by the court are considered publicly available. In this sense:

• confidential documents should be:
• • labelled as such; and
  • submitted in password-protected files; and
• a specific request should be made to the court requesting a protective order for this information.

Once accepted as such by the court, confidential documents will be accessible only by:

• the court; and
• the parties authorised by the protective order.

As for the judicial requirements to disclose documents, and absent the privileges noted in question 6.3, parties must produce reasonably well-identified documents by type, function and timeline. Failure to produce can generate:

• adverse inferences; and
• in certain cases, tacit admissions.

A claim of confidentiality will not serve as an excuse not to provide documentation. Confidential information may be subject to a protective order.

When evidence is in the power of a third party, public or private, one can:

• request it directly from the third party through a right of petition; and/or
• ask the judge through an infringement complaint or a pre-litigation discovery motion to order the third party to produce the evidence.

Confidential information may be subject to a protective order.

Information and documents that are subject to professional secrecy cannot be disclosed and are never admissible. The ‘professional secrecy’ privilege can never be waived absent the imminent commission of a serious crime. There is scant case law on this privilege, but it is reasonable to believe that it includes a similar scope to attorney-client privilege or attorney work-product privilege in other jurisdictions.

Pre-litigation discovery motions are available prior to filing an infringement complaint. The petitioner must:

• demonstrate:
• • its interest in obtaining the evidence; and
  • that the evidence is in the power of the counterparty; and
• explain the nature of the potential action that will be initiated afterwards.

Evidence in the power of the parties can be presented and/or requested in:

• the complaint;
• the amendment of the complaint – an option permitted only once;
• the countercomplaint;
• the reply to the complaint;
• the reply to defences raised by the defendant; and
• outside of these scenarios, where evidence:
• • relates to new facts relevant to the case; or
  • consists of evidence that was previously unknown or unavailable.

Evidence in the power of third parties can be requested:

• directly through a right of petition; or
• by asking the judge to order the third party to produce the evidence.

Evidence that is timely requested and that must be collected during the litigation (eg, witnesses and depositions from local experts) is presented during an evidence hearing scheduled by the judge.

All legally obtained evidence may be admissible if it is relevant in the litigation. Expert opinions can be filed with:

• the complaint;
• the amendment of the complaint – an option permitted only once;
• the countercomplaint;
• the reply to the complaint; and/or
• the reply to defences raised by the defendant.

During the evidence hearing, experts (and witnesses) may be subject to direct and cross-examination by the parties and the judge.

For preliminary injunctions, the standard is of reasonable indicia. For a decision on the merits, the standard is the equivalent of a preponderance of the evidence.

Mostly on the plaintiff. However, it can shift to the defendant in the following cases:

• The evidence relates to an affirmative defence (eg, a fair, reasonable and non-discriminatory defence); or
• The evidence relates to aspects that are impossible for the plaintiff to demonstrate and possible for the defendant, such as undefined affirmations and negations (eg, alleging to have never granted a licence – if the defendant refutes such statement, it has the burden of proving that a licence exists).

Under Andean Community Decision 486, when a process patent for obtaining a product is allegedly infringed, it is presumed that any identical product made without the patent holder’s consent was obtained using the patented process, unless the accused party proves otherwise. This applies when:

• the product is new; or
• the patent holder cannot reasonably determine whether the process has actually been used.

There is no specific procedure in this regard. As part of the complaint and reply, each side will provide its own construction of the allegedly infringed claims, using:

• the specification, drawings and prosecution history as interpretative support; and
• expert witness testimony to provide support for the construction.

The final determination will be made by the judge in the first-instance decision.

The standard is the equivalent of a preponderance of the evidence.

• The specification and drawings;
• The prosecution history; and
• Exogenous expert evidence.

No (but they could be amended before filing a complaint).

In an infringement procedure, a defendant can allege:

• that the product or procedure does not fall within the scope of the patent (objecting to either the characterisation of the product/procedure or the scope of the claims made by the plaintiff);
• exceptions to patent rights, including:
• • experimental use;
  • regulatory submissions;
  • prior use; and
  • non-commercial personal use;
• prosecution history estoppel;
• that it has not performed any of the acts that constitute infringement; and/or
• that it has been authorised by the patent holder to perform such acts.

Although no case law yet exists, it is possible that fair, reasonable and non-discriminatory defences may become available in standards-essential patent cases to block injunctive relief.

No. Defences related to the validity of the patent cannot be asserted within infringement complaints; they can only be brought before a contentious administrative court. A party that wants to defend itself by challenging the patent must initiate a separate procedure.

No. All granted patents are deemed valid, and therefore enforceable, unless there is a judicial decision from a contentious administrative judge declaring the contrary.

There are two ways to comply with the admissibility requirements for an infringement complaint:

• attempting conciliation with the defendant before filing the complaint; or
• requesting a preliminary injunction before or along with the complaint, in which case mediation prior to the litigation is not mandatory.

During the initial hearing, there is a mandatory mediation stage, in which the judge will inquire whether the parties are willing to conciliate. If the parties are simply not willing, the procedure will move forward (this procedure rarely extends beyond a few minutes in a hearing).

Yes, the parties may jointly agree on a stay for a reasonable time and with the judge’s approval. The parties may settle the case and file for joint withdrawal with prejudice. The judges must approve a joint withdrawal in order to avoid fees and costs.

It is not necessary to reveal the scope or conditions of the settlement agreement. Jointly requesting termination of the procedure is sufficient.

Public. However, judges have broad discretion to implement confidentiality measures if deemed necessary, at the request of the parties.

Infringement and validity are separate procedures. Although potentially feasible, it is extremely difficult to obtain a stay of an invalidity procedure.

The main steps in both actions are as follows:

• filing of the complaint;
• reply to the complaint;
• reply to defences;
• initial hearing;
• evidence hearing (in infringement proceedings, the closing arguments are presented orally during this hearing; in invalidity proceedings, the closing arguments are typically presented in writing after the hearing);
• first-instance decision;
• appeal; and
• second-instance decision.

Infringement cases can take:

• between 12 and 18 months at first instance; and
• between six and nine months at second instance.

Invalidity cases can take:

• between 18 and 24 months at first instance; and
• between 12 and 18 months at second instance.

Decisions of other courts will not unduly influence the ruling, since judges have full autonomy over their cases. However, decisions of national or foreign courts in similar situations may still be persuasive. Although there is no stare decisis in Colombia, first-instance courts will normally follow appeal court decisions.

On the merits, a plaintiff can request:

• permanent injunctive relief; and/or
• damages.

No.

Damages can be calculated as:

• actual damages and lost profits;
• unjust enrichment;
• the hypothetical licence fee that the infringer would have paid, based on the commercial value of the right and existing licences; or
• reasonable royalties.

Yes. Both infringement and validity proceedings have, by nature, two instances. Once the first-instance decision has been issued, the parties have a short deadline to present their appeal, including all their arguments. Then, each party can reply to the counterparty’s arguments. Thereafter, the second-instance judge will formally admit the appeal and decide based on what both parties have filed.

New evidence can be taken into account only where:

• both parties request it;
• it was ordered but not practised at first instance;
• it was produced after the first-instance decision;
• it could not be presented at first instance due to force majeure; or
• it is aimed at rebutting evidence that was not presented due to force majeure.

• For infringement cases, between six and nine months; and
• For invalidity cases, between 12 and 18 months.

Aside from attorneys’ fees, parties will incur costs such as those relating to:

• experts;
• translations;
• travel and lodging; and
• other nominal out-of-pocket clerical costs.

When the case is terminated, the judge will:

• discretionally fix the amount of judicial costs; and
• order the losing party to pay costs to the winning party.

Although designed to cover all costs, including attorneys’ fees, the amounts in reality are far from the true investment made by the winning party.

Yes.

Yes.

Patent litigation in Colombia has increased in recent years. In particular, Colombia has become a preferred forum for standards-essential patent litigation due to:

• the availability of prompt preliminary injunctive relief; and
• a strong presumption of validity.

As more assertion campaigns are conducted, judges continue to gain a better understanding of patent issues that will result in more reliable and consistent decisions. There are no anticipated legislative reforms in the next 12 months.

For plaintiffs in cases involving standard-essential patents (SEPs), we recommend ensuring an ample patent portfolio in order to maximise the odds of succeeding in litigation. Plaintiffs should also keep track of trends and timelines in the civil circuit and the Superintendence of Industry and Commerce Judicial Division in order to evaluate the best forum in which to litigate each particular campaign. Crafting an easy to understand narrative – including a clear fair, reasonable and non-discriminatory (FRAND) compliance explanation – is also critical.

Potential pitfalls include a shift in judicial attitude concerning early injunctive relief, especially in light of global interim licences being granted in the United Kingdom. For SEP defendants, potential relief from an early injunction may come on appeal at best. In this sense, trying to accelerate cases to a first-instance decision and push for FRAND-related defences might make sense.

Finally, for all patent cases, we would recommend that all parties fully explore discovery options to best defend their cases.