Business brief 2015: Venezuela

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

A patent application must be filed at the Autonomous Service of Intellectual Property (SAPI). The minimum filing requirements are the specification, claims, abstract and drawings (if any) in Spanish; a priority document (only if priority is claimed); and a power of attorney and declaration of inventorship with assignment. The power of attorney and declaration may be filed after the application; both documents must be either approved by the Venezuelan consulate or certified by the Apostille Convention.

Venezuela has signed the Paris Convention, but is not a member of the Patent Cooperation Treaty.

The SAPI examines an application; if it doesn’t comply with the legal requirements for patentability, the agency issues an office action. If it does, the SAPI requests three local newspapers to publish the application. Afterwards, it is published in the official bulletin issued by the SAPI. Once published in the official bulletin, any third party may file an opposition.

If either no oppositions have been filed or they have been dismissed once the opposition period ends, the registrar shall decide whether to grant the patent. If granted, the SAPI sets a short term for paying a granting tax and proceeds to issue the patent certificate.

A reconsideration appeal may be lodged against the refusal of a patent application or an unfavourable opposition decision within 15 working days of the decision’s publication in the official bulletin. A further appeal against the dismissal of a reconsideration appeal may be lodged within 15 working days before the minister of commerce. An appeal against an unfavourable decision issued by the minister may be lodged before the Supreme Tribunal of Justice.

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

Registration costs are approximately $3,500. The cost of defending it may depend on the case.

Where can you find information on existing patents in your jurisdiction?

Patent information may be found on the SAPI’s website: www.sapi.gob.ve

Is there anything unusual about the patent law(s) that companies should be aware of, and what are the most common mistakes businesses make?

It is important to obtain a specialist legal opinion to determine the best way of defending patents to keep them alive while they are still pending. Among the most important points to consider is the real and current interest of the invention to the client and their business.

In any case, this analysis will serve to keep pending patent applications alive in Venezuela while awaiting a final SAPI decision on patentability. From a practical viewpoint, owners should maintain their presence in the market as it will allow them to strengthen their position in relation to competitors.

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

The strategies may vary depending on the case. The most frequent strategies for dealing with infringement are: (i) using extra-judicial measures such as sending a cease-and-desist letter or negotiating with the infringer;
(ii) using judicial measures such as filing a lawsuit before a competent court against the infringer; (iii) taking advantage of border measures before the customs authorities; and (iv) filing a complaint at a criminal court through a special district attorney.

Trademarks
How do you register or secure trademark rights and what protection do they grant?

A trademark application must be filed at the SAPI together with an official search (per word and per design) by a power of attorney approved by either the Venezuelan consulate or by the Apostille Convention.

"From a practical viewpoint, owners should maintain their presence in the market as it will allow them to strengthen their position in relation to competitors."

The SAPI examines the application and issues an office action if it does not comply with the necessary legal requirements for patentability. If it does, the SAPI will request its publication in a local newspaper before publishing it in the official bulletin. After its publication in the official bulletin any third party may file an opposition.

If no opposition is filed, the SAPI may grant or deny the application. If granted, the SAPI sets a short period of time for paying a granting tax and proceeds to publish the certificate of registration on its website, www.sapi.gob.ve

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

Registration costs approximately $1,500. The cost of defending a trademark may depend on the case.

What are the key threats to trademark owners and what is the best strategy for dealing with infringement?

The most common threat to trademarks is infringement by selling infringing products or infringing services so as to confuse the consumer.

The strategies may vary depending on the case. The most frequent strategies for dealing with infringement are: (i) using extra-judicial measures such as a cease-and desist letter and negotiation with the infringer; (ii) using judicial measures such as filing a lawsuit before a competent court against the infringer;
(iii) border measures before the customs authorities; and (iv) filing a complaint before a criminal court through the special district attorney.

What are the most common mistakes trademark owners make?

There are very few cases, but the most common mistake is not evaluating the risk and possibilities of infringement where there is the capability to do so and an individual that can do it.

Counterfeiting
How big a problem is counterfeiting in your jurisdiction?

The major counterfeiting problem is in the clothing area.

What are the best strategies for dealing with the problem?

Sending a cease-and-desist letter; negotiation with the infringer; filing a lawsuit before a competent court against the infringer; border measures before the customs authorities; and filing a complaint before a criminal court through the special district attorney.

Copyright

What are the key challenges to copyright owners in your jurisdiction?

As in most Latin American countries, Venezuela is experiencing copyright infringement especially in the areas of music and the film industry. These cases of infringement should be handled through international organisations that represent musicians and film makers.

How should people ensure they are protected against copyright infringement?

It is advisable that copyright owners register their works with the SAPI.

What is the best way to deal with infringement?

Keeping a close eye on the market by employing a local investigator to monitor the market is the most suitable strategy for dealing with copyright infringement.

María Nebreda is a partner at  Hoet Peláez Castillo & Duque. She is in charge of coordinating the intellectual property division. Before joining the firm, she worked in the Institute of Foreign Trade, where she gained experience in IP matters and community law. She can be contacted at: mnebreda@hpcd.com