How do you register or secure patent rights, and is national or international coverage most appropriate?
In order to secure patent rights in Venezuela, applicants should file a patent application at the Venezuelan patent office, the Servicio Autónomo de la Propiedad Intelectual (SAPI). As in most countries, patents are territorial. Priority rights may be claimed as Venezuela is a member of the Paris Convention. Venezuela is not member of the Patent Cooperation Treaty, however.
Where can you find information on existing patents in your jurisdiction?
Most information is available in the database of SAPI, specifically on the website www.sapi.gob.ve. Generally, patent information posted in this database is very accurate for documents published in the last 25 years.
Is there anything unusual about the patent law that companies should be aware of, and what are the most common mistakes businesses make?
The term of protection of Venezuelan patents is ten years from the date of grant. It is not necessary to request the examination of patentability of the application. Chemicals of any type, including pharmaceuticals, are not patentable. Protection is only allowed for the procedures for obtaining such products. Protection for any living organism including microorganisms and plant varieties is also not permitted. The first annuity must be paid upon filing.
"Although actions may be taken without registration, such as actions based on notoriety, without registration it is very difficult to take action against infringers."
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
Rights owners may bring an action against any person infringing their right and also against any person performing acts that are extremely likely to result in the infringement of that right.
Despite the above, the owner of a patent may also authorise a third party, licensee or distributor to file suit on the basis of its rights via a written contract.
How do you register or secure trademark rights and what protection do they grant?
Protection is based on the first-to-file principle. Exclusive rights of use of a trademark are granted through a decision issued by the examiner and once the final granting taxes have been paid. The registration of a trademark will also grant the owner the right to defend its trademark before a court and take actions against any unauthorised use.
What are the key threats to trademark owners and what is the best strategy for dealing with infringement?
The main problem is not seeking proper local registration. Although actions may be taken without registration, such as actions based on notoriety, without registration it is very difficult to take action against infringers.
What are the most common mistakes trademark owners make?
Not conducting clearance searches or filing an application before launching a product.
Are there any nuances in the trademark law(s) that foreign companies should be aware of?
Multiclass applications are not allowed in Venezuela and filings should be made in the international class and the corresponding local class which, in some cases, involves additional filings.
How big a problem is counterfeiting in your jurisdiction?
Unfortunately, counterfeiting is a serious problem in Venezuela. Caracas, the capital, is the main centre of counterfeiting but you may find it in the rest of the country.
We consider that the main factor that has led to this is the lack of specialised courts and speedy solutions. Any process to prevent or stop these violations takes time. Likewise, there is little support from the administrative agencies, such as customs or SAPI.
What industries are particularly at threat?
While there are no reliable statistics or specialised studies, we believe that the industries of clothing, footwear and accessories, as well as toys, would be the main industries affected.
Similarly, the film industry is one of the most affected by the copying and unauthorised sale of films.
What are the best strategies for dealing with the problem?
The best strategy is to take prompt action. The more scattered the infringing products are the more difficult it will be to fight against them. Border measures, in the case of imported products, are part of the most important strategies to prevent these products from entering the market.
How can public-private partnerships to tackle counterfeiting be improved?
In the case of imported products, it is important to work with customs so they may implement the trademark registry to control the entry of unauthorised or infringing products.
Training courses for custom officials so they may differentiate originals from counterfeit products, understand the legislation and know the powers granted to them to stop counterfeiting products from entering the country are needed. Also, campaigns to raise awareness among consumers may be useful.
What are the key challenges for copyright owners in your jurisdiction?
Having a proof of existence of the work and its authorship. This is why we strongly advise our clients to secure registration, although it is not mandatory.
How should people ensure they are protected against copyright infringement?
The best way to secure copyright is by filing an application. The works may be registered before the Intellectual Property Registry of the National Directorate of Copyright. An application for registration is filed along with two copies of the work. The directorate evaluates the application over a period of approximately six months and decides whether to grant the registration.
What is the best way to deal with infringement?
The Copyright Law sets forth the possibility of having the existence of a right declared by a court decision. Through this authorship decree, the copyright owner may ask a judge for a declaration of his or her rights and request prohibition of the infringing activity. The copyright owner may ask the judge to issue an order to destroy or withdraw illicit copies. Furthermore, the copyright owner may also sue for damages.
Are there any other IP developments we should know about?
A series of discussions has been started at Congress that are intended to amend the Copyright Law and the Law on Industrial Property. The purpose of these amendments is to update Venezuelan laws to bring them in line with international treaties and include any topic beyond the scope of this international system of protection.
The national government increases the tax unit on an annual basis. The Tax Stamp Law establishes the amount of official fees to be paid for IP rights, which are calculated in accordance with the tax unit. The new tributary unit has brought a significant increase in the official fees to be paid for some services, such as patent annuities, trademark granting, renewals and changes of ownership.
Foreign applicants must pay such fees in US dollars by means of a bank transfer from a foreign bank account, directly or through their local agents.
Patricia Hoet-Limbourg is a partner at Hoet Peláez Castillo & Duque. She began her career at the firm as an intern and became an equity partner in 2003. She has also been active in the management of IP portfolios and in the life sciences industry. She can be contacted at: email@example.com
Patricia Hoet-Limbourg, Venezuela, copyright law, Hoet Peláez Castillo & Duque