Sailing through Venezuelan IP

Patent and trademark offices are not immune to politics, and most notably so in Venezuela. It has become remarkably hard to know what’s exactly going on with this country’s Intellectual Property, specially because the domestic PTO -The SAPI- has dedicated their news section and press releases to political propaganda. Additionally, they stoped reporting data on applications and procedures to the World Intellectual Property Organization several years ago.

And it is a shame. Because Venezuela remains one of the most attractive markets for investment in Latin America. Even though Venezuela left the Andean Community in 2006, trademark applications in the country seem to not have been affected.  Trademark applications have been increasing during the last decade, and the total number is among the largest in Latin America -if compared with countries with about the same size, of course-.

Steady growth in TM Applications

The Venezuelan people has, in general, a good purchasing power. And the economy remains surprinsingly well integrated with global markets -sometimes it seems to even more integrated than that of countries like Colombia, Peru and Bolivia-.

Decline in Patent Applications

Patent applications are a rather different story. The number of applications have been steadily declining for several years now. However, this is not so much a result of low interest in the country, but of bad politics. The current patent regulation dates back from 1955, and is specially troublesome for pharmaceutical patents.

At this moment, the best advice for an investor interested in Venezuela, is to secure the best possible legal representation. Risking some self-promotion, our opinion is that a good attorney will prove to be a valuable resource for sailing the turbulent and attractive waters of Venezuelan IP.

Mexico becomes third Latin American country in the Madrid System.

It is official: Mexico has formally deposited the ratification instrument of the Madrid Protocol before the World Intellectual Property Organization. This means that the Protocol will enter into force in exactly three months since the date of deposit. As we have previously stated on this blog, Mexico becomes the third Latin American country to enter the Madrid Protocol –After Colombia and Cuba– and the first major Latin American economy to do so.

The ratified treaty was deposited before WIPO on the 19^th of November 2012, and it will enter into force on the 19^th of February 2013. This leaves the Mexican PTO –The IMPI– with three months to prepare and adapt to the Protocol’s procedures. The complete list of parties to the Protocol now rises to 88.

The Mexican game rules.

Along with depositing the ratified treaty, Mexico has set two conditions for its entrance to the Madrid System:

1. The Protocol sets a 12 month period as the default time for providing notice of the provisional denial of an application. Mexico has extended it to 18 months.

2. Similarly to Colombia’s entrance to the Madrid System, Mexico has decided to establish “Individual Fees” for procedures in which Mexico is a designated country, especially in procedures for trademark registration, post-registration country designations and trademark renewals. This means that Official Fees for Madrid Procedures in Mexico will probably be a little higher than usual.

The IMPI is bound to release a new schedule of official fees, including the Individual Fees for the Madrid Protocol in the coming months. We will publish such information on this blog as soon as it’s released.

3. The registration of licenses before WIPO’s international registry won’t have effect in Mexico. Therefore, when licenses are awarded on an international registration that includes Mexico as a designated country, the license will also have to be registered before the Mexican PTO for it to have effects on this country.

Not everything that glitters…

We’ve said it before, and we’ll say it again: The Madrid Protocol is indeed a wonderful tool for easing international trademark registration, but it is not without some worrying problems. When we heard about the entrance of the Protocol in Mexico, one of the first worries that came to our mind is related to a Mexican rarity in Intellectual Property issues: Mexico does not have a procedure for Trademark Oppositions.

Given the rise in applications that always follows the entrance to the Madrid Protocol, this could mean that the Mexican PTO may be flooded with conflicting trademarks, starting cancellations actions against each-other and greatly increasing costs for trademark owners. Law firms with practices in Mexico –Our firm included– will have to keep a closer eye on new trademark applications, and filing amicus curiae for examinators to consider before granting trademarks conflicted to registered ones.

The entrance of the Madrid Protocol will surely make the Mexican trademark market more dynamic and accessible for trademark owners. At B&R Latin America we will also be getting ready for this new tool and will make sure to provide the best legal counseling for our clients in Mexico.

Sources:

WIPO

Accession to the Madrid Protocol: Mexico

Licenses on International Registries for Mexico

PTO to PTO Cooperation

Latin American PTOs have spent several years working on two major cooperation agreements, designed to not only speed up procedures but also to increase the reliability of information and to avoid duplicated procedures, especially in patent examinations. The two projects, known as PROSUR and CADOPAT cover almost the entire continent, and have been the central topic of several high profile meetings between the heads of the Latin American PTOs.

PROSUR – Regional Cooperation System on Industrial Property

Nine South American countries belong to this project; namely: Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname and Uruguay. The system has been active since August 2011, and its main goal is to become a platform for sharing information from patent examinations between PTOs, therefore reducing the effort of examining the same patent application in several countries.

The project is aimed at easing procedures for creators, entrepreneurs and IP attorneys; and is being funded by the Inter-American Development Bank (IDB). Chile’s PTO, the INAPI, has assumed the presidency of the project. The success or failure of the project is still not clear, since the effects of the agreement will really be visible within the PTOs.

In the earlier stages of this project, possibilities for a regional trademark registry and deeper regional integration of procedures have been discussed. However, these proposals have not been very successful since a regional trademark registry without an integrated regional market would be of little use and could even be unadvisable, since the trademark registry would no longer reflect the reality of the marketplaces.

The project doesn’t look for legal harmonization, but it does create a common platform for systems integration. WIPO has agreed to act as a supervisor of the project, and the experience of the WIPO CASE and the e-PEC (From Brazil’s PTO) platforms is being used for the project.

CADOPAT – Support System for the Management of Patent Applications

This is a web portal created by the Mexican PTO, the Mexican Institute for Industrial Property. It basically shares the information from patent examinations with more than 9 countries from Central America, the Caribbean and Colombia. The Mexican PTO sends its information to Recipient Offices; this means that the information is shared in one direction only, unlike the PROSUR project. Indeed, the CADOPAT system is a unilateral project from the Mexican PTO. It also shares information on searches and other procedures but it is clear that this system has a lot of room for growth.

Current members of the CADOPAT system include Costa Rica, El Salvador, Guatemala, Honduras, Panama, Nicaragua, Dominican Republic, Cuba, Colombia.

WIPO CASE – The Centralized Access to Search and Examination system

The WIPO Centralized Access to Search and Examination (WIPO CASE) system is designed to facilitate the sharing of confidential search and examination information between IP offices, and to help enhance the quality and efficiency of search and examination and minimize unnecessary duplication of work. Using this platform, patent examiners from one group of participating offices can access the collection of patent search and examination reports shared by the office group. According to the Canadian PTO, the launch of the CASE is a significant advancement towards greater cooperation between IP offices in sharing the results of examination work. This will help reduce the time spent on processing duplicate applications filed in multiple offices. The duplication of work is a contributing factor to the growing patent backlog.

The platform is intended for use by groups of IP offices that mutually recognize their search and examination work. Patent documents and data shared though WIPO-CASE can either be hosted by WIPO or the digital libraries of national offices. Initially developed to support the work sharing efforts of the IP offices of Australia, Canada and the UK, WIPO-CASE is now being used or evaluated by other regional groupings of IP offices.

e-PEC – Electronic Platform for Collaborative Examination

Argentina and Brazil have created the e-PEC, which is a trilingual platform allowing the PTOs to exchange information on identical patent applications. The e-PEC aims at enabling patent examiners to perform collaborative examination of patent applications, without the need for physical proximity between the examiners. Thus, the system offers efficiency and quality technical examination which is made in all national institutes. However, to each country remains the ultimate decision on whether or not to grant the patent. Other countries that currently use the e-PEC platform include Chile, Ecuador, Colombia, Paraguay, Uruguay, Surinam and Peru.

Source: B&R Archive

New labor law in Venezuela changes IP regulation.

The recently approved labor law in Venezuela -Ley Orgánica del Trabajo, los Trabajadores y las Trabajadoras (Lottt)- has made changes to the IP regulation under labor contracts. According to articles 325 and 326 of the law, a different standard has been created for intellectual production under working relationships with the public and the private sectors.

For intellectual property created under labor relationships with the public sector (which is understood as intellectual production by public employees of financed through public funds) there will only be public recognition of the author, but the creation itself will be considered of public domain since the moment of its creation.

For the private sector, on the other hand, the creations can the exploited by their creator, or by its employer as long as the labor relationship exists or the license contract signed between both parties is valid. This rule overturns the previous regulation, under which the employer had the property rights over the intellectual production of its employees.

This is a problematic and strange change in IP regulation, and it’s sure to create problems for the private and public sector, reducing innovation and incentives for research and development. It’s not clear how big corporations, especially in industries such as software development and journalism, will manage their IP rights under this regulation when their labor contracts are terminated.

You may read more here.

Source: Wikimedia Commons

The Office of the United States Trade Representative has released it’s 2012 Special 301 Report.

This document is an annual review of the state of intellectual property rights, protection and enforcement in trading partners around the world. This report is a valuable guide to understand current issues in IP Law and to highlight positive and negative trends on emerging markets.

The report creates a list of priority issues on IP. This year’s  report has mentioned Capacity Building Efforts, focusing on the lack of prosecution and conviction on the ground of IP infringements. The ever growing trends in Trademark Counterfeiting and Copyright Piracy, warning that the markets of pirated and counterfeit goods will soon surpass the sales volume of the licit vendors, and commenting on new ways for transportation and selling of counterfeit products such as the separate shipping of labels and packaging in order to evade enforcement efforts. Piracy over the internet, demanding stronger actions to strengthen legal regimes and enhance enforcement in order to respond to the increased availability of broadband internet connections and the piracy in new mobile devices. The violation of trade secrets and forced technology transfer, expressing the dangers of trade-distortive policies designed to promote ‘indigenous innovation’ through the lack of enforcement of IP rights and the creating of market barriers based on IP disclosures laws. Finally, the report also highlights the government use of software, trademarks and DNS, implementation of WTO TRIPS agreements, WIPO treaties and issues on IP and health policy.

However, this report is notorious for it’s Country Reports, in which US trading partners are sorted into the “Priority Watch List” and the “Watch List”, depending on their progress on IP issues and the vulnerability for US’s IP rights owners in their markets.

As to Latin American countries, Argentina, Chile and Venezuela were listed on the Priority Watch List, alongside Ukraine, Thailand, China and India. Concerns on these countries include inefficiency in Argentina’s judicial system, lack of protection against unfair commercial use and growing copyright piracy on the internet; Chile’s inefficient system for addressing patent issues for pharmaceutical products, unfair commercial use, and to fulfill it’s commitments  under the US-Chile FTA; and Venezuela’s withdrawal from the Andean Community in 2006, and widespread piracy and counterfeiting.

On the watch list, Bolivia, Brazil, Colombia, Costa Rica, Dominican Republic, Ecuador, Guatemala, Mexico and Peru are said to have progressed in protecting IP Rights, but issues on enforcement and internet piracy remain largely neglected.

Read the Full Report here.

Do you need to know how to issue POAs for your legal representation in trademark and patent issues in Latin American countries?

We have created a ABC Guide to POAs for Latin American Countries for you.

Learn about the requirements and procedures for a Power of Attorney in:

• Argentina

• Bolivia

• Chile

• Colombia

• Ecuador

• Mexico

• Panama

• Peru

• Venezuela

This is a summary of the current procedures for POAs:

Whenever you get one of our legal products, you will get special instructions for your POA, this Guide is intended for informational purposes only.