VENEZUELA Law and Practice Contributed by: Dana Bentata, Anette Beyer and Biddy Fraga Bentata, Bentata Abogados
• Filing the Application Before the IP Office: The application is filed together with Spanish-language specification, abstract, claims and, where applica- ble, technical drawings; a notarised and legalised declaration of inventorship signed by all the inven- tors; an assignment signed by all inventors, if appli- cable; a copy of the priority document, if priority is claimed under the Paris Convention; a power of attorney, if filed by a local agent; and translations of all documents executed by a locally certified translator. The official filing fee is approximately USD261, subject to exchange-rate fluctuations. Under Article 59 of the LPI, the first annuity is pay- able upon filing and is included within the official filing fee. • Formal Examination: This is where the IP Office reviews the application for compliance with formal requirements set out in Articles 29 and 59 of the LPI. If any required documents are missing, it will issue an office action requesting that the deficiency be cured within 30 days, which may be extended for up to three months upon request, at the IP Office’s discretion. • Initial Publication of the Application in the Official Gazette Three Times at Ten-Day Intervals: This is handled automatically by the IP Office upon pay- ment of the corresponding official fee of approxi- mately USD141. • Publication of the Application in the Official Indus- trial Property Bulletin (the “Official Bulletin”): This opens a 60-day window for third-party oppositions. Under the LPI, filing a defence against an opposi- tion is not mandatory. • Substantive Examination: This is when the IP Office assesses novelty, inventive step, industrial applica- bility and compliance with the prohibitions set out in Article 15 of the LPI. If the examiner raises any objections, the applicant is granted a 30-day term to respond. • Grant: This is followed by a 30-day period for the applicant to pay the registration and grant fees, which are approximately USD993. 1.3 Scope, Term and Maintenance of Patent Rights Patent protection gives its owner the exclusive right to exploit the patented product or industrial process and to prevent third parties from using the invention
or design without the patent owner’s consent. Article 7 of the LPI also establishes a cross-consent rule for improvement patents: the original inventor may not use the improvement without the improver’s consent, and the improver may not use the underlying invention without the original inventor’s consent. Patents of invention granted after 1 October 2020 remain in force for 20 years, whereas design models are protected for ten years, in each case from the date of registration and subject to the payment of annui- ties. Failure to pay an annuity causes the patent to lapse, with retroactive loss of rights. Article 19 of the LPI provides a one-time three-month grace period fol- lowing a missed annuity payment, during which the patent owner may seek reinstatement. However, once exhausted, any subsequent failure to pay an annuity results in the irrevocable loss of patent rights. No extension or renewal of the patent or design term is available. Once the applicable term expires, the protected subject matter falls into the public domain. 1.4 Ownership, Assignment and Licensing The right to apply for and own a patent belongs to the inventor or discoverer, or to a duly authorised assign- ee. The assignment of rights is evidenced through an original, notarised and legalised Declaration of Inventorship assigning the invention to the applicant. Alternatively, the application may be filed directly by the inventor or discoverer, who may later assign the invention to an individual or entity by means of a deed of assignment. The deed must include: • the name, nationality and domicile of each party; • the identification and description of the patent, including its registration number or application number, together with any priority rights and rel- evant dates; • whether the assignor owns other identical or similar patents to those being assigned; and • the signatures of both the assignor and the assign- ee. Licence agreements are subject to the same formal requirements, except that the third bullet list item does
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