Confidentiality for some patent files in Venezuela

By Esther Bergel and Ricardo E. Antequera

On February 7, 2020 OFFICIAL NOTICE NRO. DG-001-2020 was published by the Venezuelan Intellectual Property Office (SAPI), which contains a series of reforms and measures related to Intellectual Property processes in Venezuela, both for trademarks and for patents.

Among the many aspects that are regulated by such notice, it is especially noteworthy the provisions regarding the patent system, since these do not have a constitutional or legal basis, infringing upon general system principles.

In this sense, the official notice establishes an order not to publicly disclose three hundred and seventy-one (371) patent files, both granted and pending, in order to: “establish the limit of access to the existing information about them and, avoiding the improper or unscrupulous use both by the nature of the patent itself and by opponents of the political and economic system of our country.”

Additionally, a new application form called “temporary invention safeguard” was also implemented, which is reserved for all new patent applications in which the State has a participation or where it has some interest in order to comply with the aforementioned limit to freely access information.

One of the most concerning aspects of the new regulation is, firstly, the broad reach of the decree, since the measure includes any patent application in which “the State has an interest” without further limit or specification. this is basically to regularize a situation that by nature should be considered as exceptional, as no additional criteria or explanation is established in this regard except for the vague mention of the State’s interest.

Also, one of the main objectives of the patent system is to promote and encourage industrial and technological progress in society, allowing access to the information that has been disclosed through patent applications. Therefore any regulation that violates this principle should always be considered exceptional and of restrictive interpretation.

In comparative legislation, there are multiple cases in which states clearly and precisely define the technologies to which, exceptionally, limitations can be applied to public access to information about the invention that is intended to be patented, for example, the following cases [1]:

Norway: Applies only to applications related to military technologies or whose publication could harm national security;
Israel: Applies to applications whose objective is arms or ammunition, or have some other military value;
United Kingdom: It extends only to applications related to military technologies or whose publication could harm national or public security;
Sweden: Applies to applications for defense inventions;
Luxembourg: Applications that may be of interest to national defense;
Russia: Inventions that containing state secrets; or
United States: National security cases, previous compliance of a process that includes the express request to the patent commissioner by the corresponding government agency.

Likewise, by reserving access to the information of patents that have already been granted, two fundamental principles that support the system would be violated:

Incentive to technological advance through research and development based on inventions that have been previously disclosed by their owners and in consideration would have received an exclusive right of temporary exploitation;
Public policy, since it will be impossible for any citizen to know in advance if the commercialization of a certain technology could violate an invention that has been requested or granted.

Regarding the first aspect, this is why the requirement to disclose all the information is established through the patent application, including methods and elements necessary for its reproduction in such a way that any expert in the field can reproduce it, and create improvements, or derived inventions, in addition to being the way to nurture the prior art and determine if a new application has enough novelty and inventive height with respect to what has already been previously created.

Regarding public policy, it is worth remembering that as any other registry in charge of the State, the registry of Intellectual Property is ruled by the principle of publicity, except for the exceptions established by the law itself.

Principles of public policy safeguard the publicity of the information contained in the files and these must be available to anyone who has an interest in accessing them. It follows that most of the acts held and that have their underlying subject protected by industrial property (assignments or licenses of use, for example), are not valid against third parties until it is notified to the Registry of Intellectual Property in such a way that it can be known by any person, and that its annotation gives public faith and veracity to the act celebrated.

Consequently, this reservation or confidentiality of the information that regulates this new act of the VPTO in a very broad way and without major limitations, should be a violation of the provisions of article 9 of the Decree with the force of the Registers and Notaries Law of 2014 on which expressly states that:

“The public registry faith protects the plausibility and legal certainty that their annotation show. The information contained in the registry entries is public and can be consulted by anyone.”

Based on all of the above, we can note the risk that the implementation of these new provisions could represent for our patent system, and the importance that decrees as relevant as the one discussed here, in any case be drafted in a precise way to avoid its inapplicability due to the extent which they were established.

[1] https://www.wipo.int/pct/es/texts/nat_sec.html