What different types of intellectual property rights exist to protect, inventions, brands and other creations, technology, and proprietary interests in Venezuela?
Since Venezuela withdrew from the Andean Community in 2006, intellectual property rights are regulated by the Industrial Property Law of 1955 (implemented in 1956), which provides protection for trademarks, patents and commercial names and the Copyright Law of 1993, which covers the protection of original works or authorship. In 2020, following a fifteen-year hiatus in patent grants, the Venezuelan Autonomous Service of Intellectual Property (SAPI) formally recognized and subsequently began applying the Agreement on Trade-Related Aspects in Intellectual Property Rights (TRIPS), alongside the Industrial Property Law of 1955. In the event of conflicting provisions, the most favorable to patent applicants prevails.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Trademarks, including trademark renewals, have a life span of 15 years from the date of registration or the date of renewal, as applicable, and may be renewed indefinitely. Renewal requests may be filed six months prior the trademark expiration date. Prior to Venezuela’s withdrawal from the Andean Community, the duration of trademarks and trademark renewals was for a period of 10 years.
Under current Venezuelan law, patents of invention have a 20-year life span, whereas industrial design patents have a 10-year life span, each as of the date of the grant of the application. Patents granted prior to October 1, 2020, have shorter durations and cover terms beginning as of the date of filing of the patent application. In order to maintain the validity of patents, annuities must be paid in advance of the anniversary of the grant of the application. Venezuelan law does not contemplate patent renewals.
Copyright protection extends from the date of creation to 60 years after the death of the author, pursuant to the Copyright Law of 1993.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Any inventor or owner, including assignees or entities owning the rights to an invention, are eligible to apply for a patent. The filing requirements for patents, including design patents requires the submission of the (i) name, domicile and citizenship of the inventor/ designer and representing party, where applicable, (ii) original, apostilled declaration of inventorship (with assignment, where applicable), (iii) specifications, claims and drawings, if applicable, of the invention, including drawings showing different views of the design, and (iv) any applicable priority information, including jurisdiction, registration number and date.
If priority is claimed, the applicant must provide a certified hard copy of the priority application filed in a foreign jurisdiction, or alternatively, a digital copy of such priority application signed by the applicable foreign patent office, within three months of the patent application date. Priority applications must be filed in Spanish. Any translation of such documents must be executed by a locally certified translator. Such applications must be accompanied by an original, notarized and apostilled power of attorney in the name of the applicant.
Trademark and commercial name applications require the applicant to file their name, domicile and citizenship. Applications must be accompanied by an original, notarized and apostilled power of attorney in the name of the applicant. If the trademark is a logo or a logo composite mark, applicants must submit such image in a .jpg format, subject to other size specifications.
If priority is claimed, the applicant must provide a certified hard copy of the priority application filed in a foreign jurisdiction, or alternatively, a digital copy of such priority application signed by the applicable foreign patent office. Priority trademark and commercial name applications do not need to be apostilled. Any translation of such documents into Spanish must be executed by a locally certified translator.
Copyright applications require the applicants to submit the following to the Venezuelan PTO: (i) the author’s name, citizenship and address, (ii) the applicant’s name, citizenship and address (if different from the author), and (iii) a hard copy and digital copy of the material.
What criteria does my invention have to meet to obtain a patent?
Inventions must be novel, involve an inventive step and have industrial applicability. Neither the Industrial Property Law nor TRIPS provide a grace period in the Venezuelan PTO’s assessment of the novelty of an invention. Accordingly, to avoid the risk of failure to satisfy the novelty requirement, the patent applicant must ensure that they have not, prior to the filing date, disclosed the subject matter of their invention.
Can I obtain a patent for any product or process?
Applicants may obtain a patent for any well-defined and useful product, excluding drugs, medicines or pharmaceutical compositions, including instances where a new use for a previously patented product is discovered. Substances or elements, or combinations thereof, in the public domain are also excluded from patent coverage, unless such combinations are proven unable to function separately without impairing their functionality. Processes, including processes used to obtain pharmaceutical compositions, are likewise patentable under Venezuelan law.
How long do patents last in Venezuela and do they expire?
Patents of inventions granted after October 1, 2020, last for a term of 20 years, whereas industrial design patents have a life span of 10 years, as of the date of the grant of the application. Patents of inventions and industrial design patents granted prior to October 1, 2020, have a life span of 10 years from the application filing date. Venezuelan patent law does not currently provide for patent term extensions. Consequently, patents expire at the end of their terms.
Does Venezuela consider ‘statement of inventorships’?
Yes; patent applications (including patents of invention and design patents) require filing original, apostilled declarations of inventorship, which must be signed by each inventor or patent owner. In situations where the patent applicant is different from the inventor, the applicant must submit proof of assignment along with the declaration of inventorship.
Can I license my patent in Venezuela or internationally and what are the requirements to do this?
Patent owners may license their patents Venezuela upon the licensor’s registration in the Venezuelan PTO. Such registration enables patent holders to enforce their rights against third parties domestically, but this does not extend to other jurisdictions.
Dana Bentata
Bentata Abogados
Av. Orinoco con calle Mucuchies
Torre Nordic, PH
Las Mercedes, Caracas - Venezuela
Tel: +58 212 6007400
Fax: +58 212 6007401
Email: dbentata@bentata.com
www.bentata.com
Published by: www.lawyer-monthly.com - June 4th, 2024
