Brazil under WIPO’s Madrid Protocol

By Moeller IP Team. 

Dear Clients, Colleagues and Friends,

Moeller IP Advisors is happy to inform you that, for the first time, the Brazilian PTO has published, in its Official Bulletin, designations of International Registrations filed via the Madrid Protocol. This gives you the chance to not only file trademarks in the Brazilian national trademark office, but additionally enable the designation of your International Registrations through the WIPO’s Madrid System.

Sounds great, what’s the issue?
While the designation of a trademark application in Brazil has been made significantly easier, the Brazilian PTO has announced that any oppositions made against your trademark will not be published in the WIPO’s Gazette, but exclusively in the national trademark bulletin. This means that any trademark applications made through the Madrid System, and subject to oppositions by third parties, or an official rejection, will not be notified to the trademark holder via the WIPO Gazette but will have to be identified separately.

What’s our solution?
Moeller IP’s Brazil office will offer free monitoring of your trademark designations through the Madrid Protocol in Brazil and inform you of any activity. Any opposition or rejection against your (or your client’s) brand can additionally be handled by our experts on site.

Please feel free to contact us should you require more information.

Yours truly,

Moeller IP Advisors

New Appellation Of Origin in Brazil (DO)

By Moeller IP Brazil.

The Brazilian PTO published today (May 05th), in the Official Bulletin (RPI) nº 2574, the grant of the geographical indication (IG) “Campanha Gaúcha”, in the type of appellation of origin (DO), for fine white, rosé wines, red and sparkling wines. This is the seventh IG in the state of Rio Grande do Sul for the wine segment.

From now on, all wine producers who are within the demarcated region and follow the rules contained in the regulations for use – called the Technical Specifications Booklet – will be able to use IG in their products. This was granted on behalf of the Association of Fine Wine Producers of the Gaúcha Campaign.

The territorial delimitation of 44,365 km² covers municipalities or districts of: Aceguá, Barra do Quaraí, Candiota, Hulha Negra, Itaqui, Quaraí, Rosário do Sul, Santana do Livramento, Uruguaiana, Alegrete, Bagé, Piraí, José Otávio, Dom Pedrito, Ibaré , Maçambará, Bororé, Encruzilhada, Torquato Severo and Joca Tavares.

The first IG recognized in Brazil was the DO “Região dos Vinhos Verdes” for wines, granted on August 10, 1999. Currently, there are 77 records at the INPI, of which 56 are national (IP) indications and 21 are DO (12 national and nine foreign).

Source: http://www.inpi.gov.br/noticias/campanha-gaucha-ganha-indicacao-geografica-para-vinhos-e-espumantes/view)

BR PTO the Final Battle Against the Patent Backlog: Resolutions 240/2019 and 241/2019

By Vivianne Cardoso Banasiak, Client Relationship Manager

Solution against the patent blocklog

For years the BR PTO has struggled to reduce its patent backlog in order to process applications within reasonable timeframes. This is a long-standing problem and several measures have been introduced aiming to minimize the big delays. However, despite all the efforts, the patent backlog is still massive. An article summarizing all the actions taken by BR PTO against the patent backlog was recently published in our blog.

Resolutions 240/2019 and 241/2019

Nevertheless, on 7^th July, 2019, the Brazilian Patent Office (BR PTO) published in the Industrial Property Gazette (often referred to as RPI) what is expected to be the solution against the patent backlog: Resolutions 240/2019 and 241/2019. These Resolutions aim to optimize the technical examination proceeding of patent applications in Brazil and figure as part of the Government’s “Strategic Industrial Property Project” of reforming and reorganizing the current system established at the BR PTO.

The new Resolutions are based on an existing Resolution 227/2018, published on 30th October, 2018, which defines the pre-examination proceedings of patent applications using the results of prior art searches carried out by Patent Offices of other countries, of International or Regional Organizations, to expedite the technical examination proceeding conducted by the BR PTO.

In general terms, the difference between these two resolutions rests on the fact that Resolution 241/2019 regulates the simplification of technical procedures for examination of patent applications (pending a 1^st technical examination) by using the work already done by other patent offices in the world.

The Resolution 240/2019 regulates the examination procedures of patent applications (pending a 1^st technical examination) where no search has been performed by other patent offices in the world. For patent applications examined under the new Resolutions, the BR PTO will publish a pre-examination requirement under two new codes: 6.21 (for Resolution 241/2019); and 6.22 (for Resolution 240/2019).

Requirements for resolutions 240/2019 and 241/2019

The Resolutions are applicable to patent applications that fulfil the following requirements:

*ANVISA: Brazilian Health Regulatory Agency

Whether the patent application does not fulfill the requirements, such exclusion will also fall on its divisional applications.

Once the above-mentioned requirements are met, the BR PTO will publish the pre-examination requirement (codes 6.21 or 6.22) containing:

Under code 6.21:

• the search report with the prior art documents cited in the searches and/or technical examination carried out by Patent Offices of other countries, of International or Regional Organizations;
• a request to adjust the claim and/or present arguments related to the patentability requirements in light of the prior art documents.

Under code 6.22:

• the search report with the prior art documents: search carried out by Brazilian patent examiners;
• a request to adjust the claim and/or present arguments related to the patentability requirements in light of the prior art documents.

The applicant will have a period of 90 (ninety) days to fulfill the requirement of the pre-examination (reply filed under code 207). Otherwise, the patent application will be shelved.

Whether the new set of claims presented increases the number of claims submitted at the time of the examination request the fee for the examination request should be supplemented.

Regarding the patent applications under Resolution 240/2019, whether the search carried out by BR PTO returns only non-relevant documents, the patent will be granted and no pre-examination requirement (code 6.22) will be published.

The Resolutions 240/2019 and 241/2019 will enter in force on 01^st August, 2019 and on 22^nd July, 2019, respectively. The Resolution 227/2018 will be revoked on 22^nd July, 2019 by Resolution 241/2019.

Source: www.inpi.gov.br