VENEZUELA Law and Practice Contributed by: Dana Bentata, Anette Beyer and Biddy Fraga Bentata, Bentata Abogados
not apply. In addition, a licence may only be recorded with respect to a registered patent. Assignments and licences must be recorded to be effective against third parties. While recordation is not a condition of validity as between the parties, an unre- corded transfer or licence may not be invoked against third parties, including in infringement proceedings or invalidity challenges, and is therefore strongly advis- able for both enforcement and defence purposes. Under Articles 325–329 of the local labour law ( Ley Orgánica del Trabajo los Trabajadores y las Trabajado- ras ), inventions developed within an employment rela- tionship generally belong to the employee, subject to certain exploitation and preferential acquisition rights in favour of the employer. 1.5 Patent Infringement and Defences The law treats patent infringement as the unauthor- ised direct exploitation of the patented subject mat- ter. Administrative practice indicates that the scope of protection is determined by the patent certificate together with its attached claims, resulting in a largely literal approach to claim interpretation. The LPI provides several defences and grounds affecting enforceability, including: • administrative or judicial annulment of the patent where (i) it was granted in contravention of the LPI, or (ii) a third party was prejudiced by its grant; • lapse and entry into the public domain where the patent is not exploited in Venezuela within two years of grant, or where such exploitation is inter- rupted for an equivalent period, in the absence of force majeure; however, in practice, no such action has been initiated to date; and • expropriation in the public interest under Article 16 of the LPI. (To date, however, no patent has actually been expropriated by the State. Although Venezuela is bound by Article 31 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”), which contem- plates compulsory licensing and requires adequate remuneration to the rights-holder, the TRIPS Agree- ment does not automatically prevail over domestic legislation. Pursuant to the Venezuelan Constitu-
tion, a domestic court would not be constitutionally required to apply the TRIPS Agreement over the LPI where the two conflict.) Given Venezuela’s withdrawal from the Andean Com- munity and the inapplicability of the PCT, practitioners should not assume that defences recognised in other jurisdictions will be available without further analysis. 1.6 Patent Enforcement and Remedies Limited Border Enforcement There is no standing customs recordation system or watchlist mechanism. Border enforcement is therefore limited and generally requires proactive, case-specific action by the rights-holder. Jurisdiction and Proceedings Intellectual property disputes are generally pursued through civil proceedings before the ordinary courts, as there is no specialist IP court. The competent forum for IP disputes, including oppositions based on claims of better right, is the Court of First Instance in Civil, Commercial, Traffic, Banking and Maritime Matters ( Tribunal de Primera Instancia en lo Civil , Mercantil , Tránsito , Bancario y Marítimo ). The same conduct giving rise to civil liability may also attract criminal sanctions under the LPI, and a criminal complaint may also be lodged with the Public Prosecutor’s Office, which may pursue the matter with the assistance of the competent police authorities. Remedies The remedies expressly contemplated by Articles 97 to 105 of the LPI are primarily penal in nature and include imprisonment of one to twelve months, fines, and destruction of infringing goods and instrumentali- ties depending on the type of infringement. The LPI does not provide a developed civil remedies regime, and there is no express statutory basis for damages, account of profits, fee-shifting or interim injunctions. Validity Challenges Patent validity may be challenged either through administrative annulment under the LOPA – brought by the IP Office at any time where the patent was granted in contravention of the LPI – or through a nul- lity action under Article 66 of the LPI – brought by a third party prejudiced by the grant. A nullity action
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