General Information about Patent in Venezuela:
• Current Law establishes a maximum term of protection for patents for inventions or improvements, industrial models and designs of between 5 and 10 years, as requested by the petitioner. Such term is not extendible.
• Current law does not allow patenting pharmaceutical products or foods.
• The patent issue system is extremely slow in Venezuela, implying that the process of registration of a patent, model or design could draw out for between 5 and 6 years, approx.
• Venezuela is not a signatory of the Patent Cooperation Treaty (PCT). Therefore, it is not possible to enforce the priority terms set out therein. Nonetheless, it is possible to file a patent with priority applying the Paris Convention.
• Please note that the Official Fees vary annually. This variation is grounded in the amount of the Fiscal Unit established by the Venezuelan Government.
• Please be advised that with the patent filing we are obligated to pay the first annual fee, and the subsequent years are payable when and if the patent is granted.
• According to our regulations, all documents must be duly notarized and legalized by Apostille. If they are in foreign languages, they must be duly translated by certified public translator.
In order to file a patent in Venezuela, we need the following information and documents:
• Power of Attorney (POA) duly Notarized and Apostilled or Legalized by consulate. Send via email first then via courier in original. Please, see attachment.
• Declaration of Inventorship and if applies an Assignment of Invention by the creator to the applicant. Notarized and Apostilled.
• Description, claims, drawings and summary of the patent.
• As members of the Paris Convention we will be able to claim priority if there has been an earlier filing, for this we will require a certified copy of the Priority Document translated into Spanish.
• An application can be filed without power of attorney, declaration of Inventorship or assignment; these documents must be submitted within 60 days after the patent was filed.
New Trademark Rules in Venezuela:
The Trademark Office of Venezuela by resolution published on February 1, 2019 re-established the payment of services and official fees for foreigners. The positive thing about this resolution is that it reestablishes the payment of fees after a paralysis of almost twelve (12) months (IPO of Venezuela was not receiving officials fees payments due issues with their monetary system) and there was a considerable REDUCTION in the amount of said fees, for example, in the present case, we have that the final registration fees went from USD$ 1,950.00 at USD$ 120.00 for each trademark and in one class in Venezuela.
Nice Classification Exclusively / New Official Fee
The Venezuelan Patent and Trademark Office informed that all new trademark applications have to be filed exclusively under the 11th edition of the International Classification of Goods and Service for the purpose of trademark prosecution of the Nice Convention. This is effective as of 10 February 2020 and the dual system has been ceased where applications had to be filed according to the national classification along with the equivalent international class according to the Nice Agreement.
Venezuela is also preparing for a new Industrial Property Law with the purpose of designing a new, appropriate and updated legal framework involving Patent, Utility Model, Trademark, Design, Geographical Indications, Denominations of Origin, Unfair Competition and modern enforcement regulations among other aspects. The final draft must undergo a public presentation to gather participation of interested parties and a second discussion prior to approval.
Document required for trademark registration in Venezuela:
- Power of Attorney (POA) duly Notarized and Apostilled or Legalized by consulate. Send via email first then via courier in original.
Procedure of Trademark Registration in Venezuela:
• The procedure for registering a trademark in Venezuela begins with the mandatory search before the Trademark Office, the results may be available within three (3) to four (4) business days. If the trademark in question is available, the customer can proceed with his request.
• In the first stage the request will be subject to a formal review (to see if formal requirements such as power of attorney, correct classification, etc.) are fulfilled. It should be noted that recently, and without prior notice, the Trademark Office is making a premature background exam or brand registrability exam. At this stage, therefore, the Intellectual Property Office, in addition to the examination of the form, may declare the trademark's refusal ex officio, indicating that it is incurred in grounds of absolute irregularity (lack of distinctiveness, is descriptive, generic, etc.). ) or causes of relative irregularity (it is confusing with previous third party marks).
• This decision may be challenged within a peremptory period of fifteen (15) business days.
• This process is carried out during the first five or six months (after the trademark in question is requested). If the sign does not meet the requirements of form, the mark will be subject to an official hearing that will be notified in the Industrial Property Bulletin and the client would have thirty (30) business days to respond to it.
If the mark passes the exam in a proper way or if it fails to correct what is required in the official hearing, the Registrar will order its publication in the press (this will also be notified by official notice in the Official Gazette or Gazette) and the client has this case with a period of two (2) continuous months to comply with this formality.
• Once the publication is published in the press, the sign in question will be published in the Official Gazette for opposition purposes, the period for opposition purposes is thirty (30) business days.
If the mark is not objected by third parties, it would go to the final stage, where the Trademark Office can order the concession (registration) of the said sign, in which case the client would have thirty (30) business days for the payment of the rights register them and the sign in question would be registered for a period of fifteen (15) years.
• In any case, the entire process described above can take on average between twelve (12) to fifteen (15) months (if the brand does not present obstacles in its process) and between two (2) and three (3) years if the brand Is objected by a third party or is the object of an ex officio refusal by the Intellectual Property Office.
Timeframe: 12 to 15 months, approximately in smooth procedure.
Validity: 15 years, renewable.
As of 10 February 2020, new trademark applications have to be filed exclusively under the 11th edition of the International Classification of Goods and Service for the purpose of trademark prosecution of the Nice Convention. The dual system has been ceased where applications had to be filed according to the national classification along with the equivalent international class according to the Nice Agreement.
Additional observations of the Trademark Registration Proceedings in Venezuela
The trademark registration process pursuant to the 1956 Industrial Property Law is very different from that under Decision 486. One of the mayor differences, besides the reclassification into Venezuelan Classes, is that applications are now reviewed as to compliance with formalities and, once they have approved this review, the Industrial Property Registrar orders advertisement of an abstract of the application in a local newspaper via notification in the Industrial Property Bulletin prior to the publication for opposition purposes.
The following is a brief description of the registration process:
1. The application is filed, a separate application must be filed for each class of interest indicating both the local and the International Class. A power of attorney is necessary duly authenticated before a Notary Public and legalized by Apostille (or by the Venezuelan Consulate of the country of origin, if applicable). This document can be filed afterwards as a late filing upon request of the formalities examiner who will issue an office action requesting this mandatory formality and setting a deadline to comply with this request. A set of mandatory search reports over the object of the application have to be included with the application otherwise the file will not be received.
Further, all documentation issued by a personal or legal foreign entity, public or private, must be translated into Spanish by a Venezuelan sworn translator. Simple and non-certified translations of Power of Attorney, Assignment or priority documents will not be acceptable or processed by the SAPI.
2. The application is reviewed as to the fulfillment of formal requirement. If the requirements are not met, the application will be subject to a formalities office action issued by the examiner requesting to comply during the thirty (30) working days that follow the office action notification; After these 30 working days, an extension up to three (3) months may be requested to fulfill the formalities. The granting of this etension is optional for the Registrar, and the IP Office shall notify the period granted in a subsequent IP Gazette.
3. The application will also undergo a substantive examination check for absolute and relative grounds for refusal; if a refusal issues, the applicant can appeal this decision during the fifteen (15) days that follow the decision. If no grounds for refusal is raised then the application will enter advertisement stage.
4. The SAPI orders (via official notice in the Industrial Property Bulletin) the advertisement of the application in a local newspaper, at this stage, the opposition stage has not initiated. This advertisement has to be arranged and accomplished during the 2 months that follow the order and will be subject to review and approval.
5. The application is published in the Official Gazette for opposition purposes. Third parties enjoy thirty 30 days from publication to file an opposition. If an opposition is lodged and the fee has been paid, the applicant will be notified and will have fifeen (15) days to be notified of the opposition and obtain a copy of the opposition brief. Subsequently, the applicant will have fifteen (15) days to file a Brief with the allegations it deems pertinent for its defense.
In case of filing a reply to the opposition, the application will be declared as abandoned by the IP Office.
6. If no opposition is filed, the application is published as granted in the Official Gazette.
In the extraordinary case that refusals and formalities office actions have been issued post advertisement stage, the applicant has to reply or file for an appeal in order to maintain the application under prosecution.
National Opposition Period
The opposition period is 30 working days from publication date of the application in the Official Gazette. Failure to file a response to the opposition within the last fifteen (15) days of this period will result in the application being declared withdrawn. An opposition can be filed on the basis of better rights and prior national use: In this case the opposition proceedings will be held in a civil court as a regular civil trial.
Accelerated Opposition Examination
Further, the Patent and Trademark Office introduced a new official fee when filing for opposition proceedings. As from 10 February 2020, it is mandatory to include the official fee payment receipt as an annex to the opposition writ in order to receive a filing date.
In addition, the Office will introduce an accelerated examination process in order to obtain an early first instance decision of the Office on the opposition. Interested parties would have to file a writ requesting for an accelerated examination and pay the corresponding new official fee during a fixed time frame to receive the new service. It is expected that the new service will be available during the current year.
Trademark rights are granted and calculated from the date of registration and renewal due date. Before September 12, 2008 the trademark right grant was valid for 10 years from the date of registration or from the renewal due date. After September 12, 2008 a trademark registration is granted for 15 years from the date of registration and is renewable for periods of 15 years.