Main differences between the Decision 344 and 486 of the Andean Community and the IP Law of 1955
After the publication of the withdrawal decision, a group of Agents filed a claim against it, requesting the suspension of its legal effects.
On November 10, 2008 the answer provided by the TM Office was published (Bulletin N� 497), according to which the claim was considered “inapplicable”.
The Office is not able to suspend the notice and its legal effects, as an administrative act cannot overrule a Law in force in the Republic.
The enforcement of Decisions 344 and 486 of the Andean Community did not mean the annulment of the IP Law, which was only suspended in order to follow the provisions of the Andean Community rules (while Venezuela was still a country member).
The Office considered that as from Venezuela’s withdrawal from the Andean Pact, the IP provisions included in the Cartagena Agreement did no longer belong to the Venezuelan law system.
Notwithstanding the uncertainty and objections encountered by this decision, the TM Office is currently applying the IP Law, which shows the following main differences:
- As Decision 486 is no longer in force, the Nice Classification became inapplicable, ruling instead the classification contained in the art. 106, as long as Venezuela is not a formal member of the MERCOSUR.
- The renewal of a trademark registration has to take place within the last 6 months prior to the expiration date, without the possibility of obtaining a grace period.
- Now, trademarks will be valid for 15 years, while the Andean provisions established a period of 10 years.
- Once the formalities of the application are approved, the trademark must be published first on a daily, well known newspaper, and afterwards, the TM office shall proceed with the ordinary publication in its bulletin. In addition, the term provided for third parties to file oppositions against applications expires 30 days from that last publication.
- In case that the applicant does not respond an opposition, the application shall be deemed abandoned.
- If an application is rejected, the term for filing the corresponding amendments is 30 days, instead of 60 days.
Regarding the administrative measures issued during the period between April 22, 2006 (date of withdrawal from the CAN) and September 17, 2008, as well as those procedures carried out during this term, the TM Office is analysing their legal situation, with the purpose of providing a suitable solution.
In connection with patents, the new law has introduced the following changes:
- Patents will be granted for 10 years counted as from granting date.
- Absolute novelty does not exist any more for patents and this opens the possibility of obtaining importation or revalidation patents.
- The figure of the utility model has been suppressed.
- The publication procedure is more complicated and expensive.
- The examination request has been suppressed.
- The protection of chemical compounds has been suppressed and only patents for the novel process for obtaining them can be protected.
- Annuities must be paid after the patent has been granted.
- The grace period for paying annuities has been suppressed and there remains only payment with surcharge for the period of three months but only once in the lifetime of the patent.
We will keep you informed on the evolution of these matters. If you need further assistance, please do not hesitate to contact us at firstname.lastname@example.org.