1 January 2010CopyrightPatricia Hoet-Limbourg

Business brief 2010: Venezuela

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

Our current Industrial Property Law provides that in order to obtain protection of an invention, an application should be filed before the Patent and Trademark Office (PTO). Venezuela is a member of the Paris Convention but not the Patent Cooperation Treaty; therefore, applications should be filed locally and will have national coverage.

In order to be patentable, the subject matter must be novel; there are however some exceptions to this requirement, such as inventions, improvements or industrial models or designs that, having been patented abroad, have not been divulged, patented nor executed in Venezuela, and are not in the public domain. Inventive step is required for inventions.

What are the costs of registering a patent, and what are the costs of defending it?

The average cost of registering a patent is approximately $3,000. The costs at trial level depend on whether there are any injunctions; if so, the petitioner can expect regular trial costs of between $25,000 and $30,000, increasing by approximately $12,500 for an injunction proceeding.

Is there anything unusual about the patent law that companies should be aware of—what are the most common mistakes businesses make?

The withdrawal of Venezuela from the Andean Community in 2006 brought important changes to the legislation governing IP matters. A petition for interpretation was filed at the Constitutional Chamber of the Supreme Court and a decision, which should determine whether Decision 486 is still in effect in Venezuela, is still pending.

Meanwhile, the PTO has published a notification that, as from September 17, 2008, the law applicable in Venezuela is the Law of Industrial Property of 1955, which was the law in effect prior to Decision 486 of the Andean Community.

This law has implemented several changes:

  1. Patent protection has been reduced from 20 to 10 years
  2. It excludes some matters subject to patentability
  3. There is no patentability review by the examiner
  4. The applicant has the burden to publish in a local newspaper
  5. Compulsory licences are not stipulated
  6. The novelty requirement is only on a national level.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

Currently, the key threat to patent owners are legal uncertainties due to the application of the IP Law of 1955. Other issues are the extreme delays and inefficiencies of the PTO.

A wide array of injunctions is available for a patent owner to guarantee its rights during the course of a judicial proceeding. The judge, at his own discretion and provided that the plaintiff can support its right and show irreparable harm, can order injunctions ranging from the seizure of goods to the prohibition of the sale of goods.

Other measures (injunctions) that may be ordered include: immediate cessation of all acts constituting the alleged infringement; withdrawal from commercial channels of all products resulting from the alleged infringement, including packaging, wrappings, labels, printed material or advertising, or other materials, together with materials and implements whose predominant use has contributed to the infringement; suspension of the importation or exportation of the goods, materials or implements referred to under the previous point; establishment by the alleged infringer of an adequate guarantee; and temporary closure of the business belonging to the defendant or accused, if necessary, to avoid continuation or repetition of the alleged infringement.

Trademarks

How do you register or secure trademark rights, and what protection does it grant?

Protection in Venezuela is granted on a first-tofile basis. Therefore, in order to obtain protection on a trademark, an application should be filed before the Trademark and Patents Office. A grant gives the owner exclusive rights to the mark for a period of 15 years.

What are the costs of registering a trademark, and what are the costs of defending it?

The normal cost of obtaining a trademark can range from $1,400 to $2,000. The costs at trial level depend on whether there are any injunctions; if so, the petitioner may expect regular trial costs of between $25,000 and $30,000, increasing by approximately $12,500 for an injunction proceeding.

What are the key threats to trademark owners (counterfeiting, passing-off, online infringement, etc.), and what is the best strategy for dealing with infringement?

Piracy is an issue and the main threat to IP owners, particularly to the music, video and fashion industry. The best strategy for dealing with infringement is to keep a close eye on the market, employing a local investigator to monitor the market. It is also important to work in collaboration with the public authorities and enforcement agencies.

What are the most common mistakes that trademark owners make?

The emphasis should be on effective and preventative planning. In times of crisis, it is important to optimise the use of economic resources for the management of IP rights. IP owners should establish a trademark plan co-ordinated with the company’s business, marketing and growth plans. These plans should be discussed within the legal, marketing and advertising departments of the company.

Counterfeiting and online piracy

How big a problem is counterfeiting and/or online piracy in your jurisdiction?

Counterfeiting is definitely a bigger problem than online piracy. DVD and CD vendors can be found on almost all street corners and local markets are infected with counterfeited products.

What industries are particularly at threat?

The most threatened industries are the music, film and fashion industries.

What are the best strategies for dealing with the problem?

Again, the best strategy for dealing with counterfeiting in Venezuela is to have a local counsel that can advise you on the preventive measures that may be undertaken in order to defend your IP rights.

General

Are there any legislative changes to the IP regime that would make businesses’ life easier?

The lack of a Supreme Court verdict on a request for interpretation and the lack of a new law adapted to the current economic and legal realities means that the situation in Venezuela is unclear.

Nevertheless, there has been an announcement that Venezuela’s legislative body is currently developing a new law, which we hope will improve the current ambiguous situation. It is important to highlight the government’s intention to make the new law compliant with international treaties, which should be a relief to IP owners.

Patricia Hoet-Limbourg is a partner at Hoet Peláez Castillo & Duque. She can be contacted at: phoet@hpcd.com

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