Legal & Regulatory > Venezuela > Patents & Trademarks

An insight into patents & trademarks in Venezuelan Pharma. Prepared in association with Hoet Pelaez Castillo & Duque (HPCD), a leading law firm in Venezuela, this is an extract from The Pharma Legal Handbook:Venezuela, available to purchase here for USD 99.

1. What are the basic requirements to obtain patent and trademark protection?

The basic requirements for a patent application consist of: (Art. 59 Industrial Property Law)

A. Submit the application and a copy of it to the Autonomous Intellectual Property Service. It must include:

• Name, address and nationality of the inventor.
• Name and address of the agent, when the request is by proxy.
• The applicant must really be the inventor or discoverer of the good to be patented.
• The object of the patent has not been used in Venezuela, under any circumstances.
• The originality.
• The kind of patent requested.
• Number, date and origin of the foreign patent or source of necessary information in the case of ignorance of the data, when referring to an introduction patent.

The application must be accompanied with:

• A duplicate report, in Spanish, which clearly describes the object on which the patent rests with complete and exact specification of the operation and construction method, make or combine the corresponding machine, handwriting, composition of matter, procedure, improvement, model or industrial drawings.
• Drawings and samples of the object.
• Clisé of the model or industrial drawing (should not exceed 8 * 10 centimeters);
• Certified copy, legalized and translated into Spanish of the patent letters of the country of origin. In the event that it has been previously patented abroad.
• The power legally granted, in the event that the request is by proxy.

It must be verified that the foreign patent is in force and the time remaining to expire for its expiration in the country of origin. As long as it has been previously patented in another country.

The basic requirements for the application of a trademark consist of: (Art. 71 Industrial Property Law)

A. Submit the application and a copy of it to the Autonomous Intellectual Property Service. It must include:

• Name, address and nationality of the applicant and the agent when it is done through a proxy.
• Full description of the brand, clearly and precisely on the essential part or the distinctive sign.
• The manuscripts, products, objects and articles that distinguish the brand and its respective class. In addition, if these are of national or foreign production and, in the latter case, if it is a registered trademark in the country of origin.
• Time in which the brand has been in use, if applicable.
• If the brand is applied to manufacturing or extractive industries, objects of a trade or agricultural products.
• That the brand has no similarity with another analog already registered, for articles of the same class or similar; so that it generates confusion or deceit to the public.

The application must be accompanied with:

• Five fascimiles of the brand and the cliche or photogravure of it (the dimensions cannot exceed 8 * 10 centimeters). It will not be necessary in the event that the mark consists only of words;
• The power legally granted in the event that the request is made by proxy.

2. What agencies or bodies regulate patents and trademarks?

Autonomous Intellectual Property Service (SAPI).

3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?

The following may be the subject of a patent: (Art.14 Industrial Property Law)

• All new, defined and useful product.
• Any new machine, tool, instrument or apparatus for industrial use or medicinal, technical or scientific application.
• The parts or features through which greater economy or perfection is achieved in the products or results.
• New procedures for the preparation of materials or objects for industrial or commercial use, chemical products and new methods of processing, extraction and separation of natural substances.
• The improvements, reforms or modifications introduced in previously known things.
• All new model or drawing for industrial use.
• Another invention or discovery suitable for industrial application.
• That invention, improvement, model or industrial design patented abroad but not disclosed, patented or executed in Venezuela.

This list is not taxative. In reality, the result of the inventive effort of human ingenuity is patentable; unless it consists of an exception established by law.

They are not patentable: (Art. 15 Industrial Property Law)

• Drinks and food items, whether for human or animal consumption. Medicines of all species. Also, medicinal pharmaceutical preparations, reactions and chemical combinations.
• The systems, combinations or financial, speculative, commercial, advertising or simple control or control plans.
• The simple use or use of natural substances or forces.
• The use of goods already known or used for certain purposes and simple changes or variations in form, dimension or material.
• Work modalities or manufacturing secrets.
• Simply theoretical or speculative inventions. That is to say that those where it is not possible to point out and demonstrate its practicality and its industrial application definitively.
• Inventions contrary to national laws, health, public order, morality, good customs and state security;
• The juxtaposition of elements already patented or in the public domain; unless they lose their characteristic function.
• The inventions that have been made known in the country for being published or disseminated in printed works or other form. In addition, those in the public domain due to their execution, sale or advertising inside or outside the country, previous to the patent application.

Any name or distinctive sign in which there is a personal interest may be registered, as if it were a trade name; although this is not commercial, by way of exception.

They may not register as trademarks: (Art. 33 Industrial Property Law)

• Those that suggest immoral ideas or serve to distinguish immoral objects or merchandise from prohibited production or commerce and those used in illegal business or on a harmful item.
• Flags, shields or badges of the Republic, of the states, municipalities or public entities. In addition, those from foreign nations, except when their use is duly authorized.
• Signs, emblems and badges of the Red Cross and similar entities.
• Geographical names, as indicators of the place of origin.
• The shape and color that is given to the articles or products by the manufacturer, or colors or combinations of colors by themselves.
• Geometric figures without novelty.
• Cartoons, portraits, drawings or expressions that tend to ridicule ideas, people or objects worthy of respect and consideration.
• The terms and phrases that are commonly used and expressions used to indicate the genus or species.
• Full name or surname of a natural person.
• The brand similar graphically and phonetically to another previously registered.
• The one that is confusing with another previously registered trademark or may induce error by indicating false origin or quality.
• The merely descriptive trade names.
• Commercial slogans that contain allusions to similar products or brands or that may harm them.

4. How can patents and trademarks be revoked?

Patents are without effect: (Art. 17. Industrial Property Law)

1. By the ruling of a competent court, to annul it for harming a better right of third parties.
2. When the exploitation or export of the invention ceases or is stopped for two years from the date of issue, except in the event of an accident or force majeure.
3. Due to lack of payment of the annuities.
4. For the express resignation of the inventor.
5. For being objected by the holder of the corresponding foreign patent requesting its registration within the country within the established period.saw. By the Minister of Development on the grounds that obtaining the patent is in contravention of the Industrial Property Law. Currently, it is called the Ministry of People’s Power of Planning.

The marks are without effect: (Art. 36. Industrial Property Law)

1. At the wish of the interested party.
2. When the deadline has expired without requesting renewal.
3. By the judgement of the competent court when they are considered harmful for a better right of third parties or when it is declared, for reasons of validity, that should never have been granted.
4. When it expires for not making use for two consecutive years.

5. Are foreign patents and trademarks recognized and, if so, under what circumstances?

Patented goods abroad can be patented, in the same way, in Venezuela; as long as the legal requirements are met. In addition, the one who owns a patent abroad will have priority to obtain it within our country, within the twelve months following the date of the foreign patent. Meanwhile, trademark registrations will have priority within six months following the date of registration of the foreign brand.

6. Are there any non-patent/ trademark barriers to competition to protect medicines or devices?

The Antitrust Law is responsible for regulating economic competition. In addition, behaviors that constitute unfair competition are sanctioned.

7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?

There is a restriction to patent medications of all species, pharmaceutical preparations and chemical preparations, reactions and combinations. As for the brands, a restriction is proposed for those of prohibited production or trade and those used in illegal businesses or on a harmful item.

The Organic Law Against Illicit Trafficking and Consumption of Narcotic and Psychotropic Substances establishes those substances as prohibited.

8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?

No.