Brazilian PTO: New Rules on Requests for Priority Examination of Patent Applications
By Vivianne Cardoso Banasiak, Client Relationship Manager
On June 18, 2019, the Brazilian Patent Office (BPTO) published in the Industrial Property Gazette (often referred to as RPI) Resolution 239/2019 and Instruction #01/2019 (available here) that regulate the conditions for prioritized examination requests of patent applications. The new rules will be valid for some fast track programmes in Brazil, with the aim of simplifying and streamlining the proceedings.
The fast track programmes under the new Resolution 239/2019 are:
- patent applications due to applicant aged 60 or above; applicant suffering from functional or mental disabilities or other severe disease; applications under specific situations, such as when the unauthorized reproduction of the subject matter of a patent application is taking place in Brazil or when and where an applicant is in need of a granted patent to receive BR funds to exploit the subject matter of the patent; applications relevant for national emergency or public interest (Resolution 151/2015);
- Applications filed by Brazilian micro and small entities (Resolution 236/2019);
- Applications related to eco-friendly and green technologies (Resolution 175/2016);
- Applications first filed at the BRPTO (Resolution 212/2018);
- Applications related to diagnosis, prophylaxis and treatment of AIDS, cancer, rare diseases or (pre-defined) neglected diseases
Brazilian Senate approves adhesion to the Madrid Protocol
By Marta Garcia, Patent Technical Advisor
On May 22, 2019, the Brazilian Senate approved the Draft Legislative Decree No. 98/2019, which allows Brazil adhesion to the Madrid Protocol, the International Trademark System. The system is expected to start operating in October 2019 at the National Institute of Industrial Property (INPI).
Created in 1989 and in force since 1996, the Madrid Protocol is an international treaty administered by the World Intellectual Property Organization (WIPO) established to create a centralized system of trademark protection for all the signatory states.
Through the Madrid Protocol, applicants can protect their trademarks in all member countries by filing a single application in one of the member countries. Procedures are uniform and the application can be filed in one of the three official languages – English, French or Spanish. However, the examination of the application follows the national legislation of each country.
The main advantages of the system are: the reduction of filing and management costs, the higher predictability in response time, the simplification of the whole procedure and the permanent monitoring for trademark management in all the countries where the trademark is registered.
Currently, 104 contracting parties are signatory to the Madrid Protocol. In Latin …
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New Brazilian Law makes Life Easier for Startups
By Carlos Cavalcanti, Partner & President Moeller IP Brazil
The Brazilian Supplementary Law 167/2019, which established INOVA SIMPLES, a simplified special regime of companies, which grants differentiated tax treatment, was published in the Official Gazette of April 24, 2019 with the purpose of stimulating the development of startup companies.
The law also determines that Brazilian PTO must create a mechanism that will link from the reception of the data to the summary processing of trademark and patents applications of companies of Inova Simples.
There will be a portal named Redesim, where a field or icon will be created for automatic communication with Brazilian PTO, of the inventive content of the scope of the entrepreneurial initiative, for the purpose of registering the trademark or patent, regardless of the normal registration path, through own INPI portal.
Source: Federal Senate (www12.senado.leg.br)
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Brazilian Official Gazette no. 2511 – Important Communication regarding Patent pre-grant Prosecution Guidelines
By Belen Priore, Patents Paralegal
On February 19, the Brazilian PTO issued Official Gazette number 2511, which contains an important communication: Creation of new codes whose lack of compliance could end with a shelved application.
Those new codes are as follow:
– 11.18 –Application to be considered as definitively shelved due to non-compliance related to Article 229-C of the LPI: In case of not obtaining the consent of ANVISA referring to the provisions of article 229-C of the law 9279 (requirement for granting patents of pharmaceutical products and processes) the patent will be definitively shelved.
– 6.6.2 – Formal requirement –Brazilian genetic heritage access: Request for the applicant to inform if there was access to the national (Brazilian) genetic heritage or associated traditional knowledge, according to art. 38 (I) of Law 13.123/2015. In order to comply adequately with this formal requirement (either positive or negative access), the applicant is ought to generate a Collection Union Guide (GRU) for replying such requirement:
– For a response with positive access content, the GRU needs to be issued under code 264.
– For a Declaration of Negative Access, the GRU needs to be issued under code 273.…
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Collaboration Between Brazilian PTO and CAS to Fight Patent Backlog with the Help of AI
By Marta García
On January 8, 2019, the Brazilian National Institute of Industrial Property (INPI) and CAS, a division of the American Chemical Society that specializes in scientific information solutions, announced that they have initiated a collaboration to speed up the patent examination process at INPI through the use of artificial intelligence (AI) tools.
CAS´s AI solution combines scoring similarity, workflow classification and knowledge-space exploration capabilities to provide patent examiners with a comprehensive set of prior art in the relevant field of technology, as well as information already published that may be relevant to the examination, helping to expedite the examination process.
“CAS´s technology can help INPI examiners quickly uncover relevant scientific information, a promising development for shortening the time of patent application processing,” said Luiz Otávio Pimentel, former President of INPI.
As recently reported in our blog, according to the INPI´s 2018 Activity Report, the average decision time for patent applications in Brazil is currently 10 years, with pharma and IT patent applications reaching a maximum average of 13 years.
Therefore, this collaboration with CAS is among the several measures that the INPI has been implementing since 2016 with the aim of tackling one of the biggest patent …
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Brazilian PTO’s 2018 statistics show productivity increase and trademark backlog reduction
by Marta Garcia
According to the 2018 Activity Report recently published by the Brazilian PTO (INPI), last year there was a productivity increase and a substantial reduction of processing time and backlog for trademarks and industrial designs. However, the backlog and the average examination time for patents still continues to be very high.
Trademarks
The number of trademark filings rose moderately from 186,103 in 2017 to 204,419 in 2018, which represents an increase of 9.8% (Figure 1). Likewise, there was a significant increase in trademark registrations from 123,362 in 2017 to 191,813 in 2018 (55.5%). More importantly, the backlog was reduced from 358,776 by the end of 2017 to 191,535 by the end of 2018, which represents a decrease of 46.6%.
Figure 1: Trademark filings (1999-2018)
According to the PTO´s report, the processing time from trademark filing was reduced from 48 months (in applications with opposition) and 24 months (in applications without opposition)in 2017 to 13 and 12 months in 2018, respectively. This substantial processing time reduction has been possible thanks to the INPI´s technical preparation to adhere to the Madrid Protocol in the near future. According to the INPI´s Strategic Plan 2018-2021, which was published in October 2018, the …
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New Manual for Brazilian Industrial Designs
By Maria Belen Priore, Patent Dept.
On January 8th, the Brazilian PTO launched the first edition of the Manual of Industrial Designs to ensure greater quality, transparency and uniformity in the field of examinations of industrial designs, the principles of legality, impartiality, morality, publicity and efficiency, within others.
This new Manual not only consolidates the guidelines and procedures related to the examination of industrial design applications, but also provides instructions for the filing of design applications and following-up on processes, helping examiners, prosecutors and users in general.
This first edition of the Manual of Industrial Designs became official by Resolution No. 232/2019 dated January 7, 2019, and was published in the PTO´s Official Gazette Nº 2505, Section I – Press Releases, and will be in force as of 03/09/2019. The aforementioned resolution also revokes normative instructions No. 44/2015, 80/2017 and articles 2nd, 3rd and the sole paragraph of resolution No. 159/2016.
This manual gathers everything concerning the Industrial Designs, being easy to access (published on the Brazilian PTO website), with no more than 135 pages (currently, because will be subject to periodic updates in charge of the Standing Committee for the Improvement of Procedures and …
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WIPO countries go GREEN
WIPO GREEN was launched on November 28, 2013 to provide an online marketplace connecting a wide variety of groups seeking shared innovation and environmentally friendly technologies to address climate change. WIPO GREEN is governed by the Advisory Board and the Secretariat under the rules laid out in the WIPO GREEN Charter.
The WIPO GREEN database and network matches owners of new technologies with individuals or companies seeking to commercialize, license or otherwise distribute a green technology. Its objective is to accelerate innovation and diffusion of green technologies and contribute to the efforts of developing countries in addressing climate change.
The WIPO GREEN database offers a broad listing of green technology products, services and intellectual property (IP) assets, and also allows individuals and companies to list green technology needs.
The database:
- offers green technology providers greater visibility for their products, services and IP assets (including inventions, patents, technologies and know-how) for sale or license, helping to attract partners and finance;
- advertises technological needs – including specific technologies and IP assets, funding, training and professional services;
- provides a listing of innovative green technologies, IP assets and experts that makes it a useful resource for investors, entrepreneurs and licensing managers
Overview of Patent Prosecution Highway programs in Brazil
Since 2016, the Brazilian PTO (INPI) has been implementing several Patent Prosecution Highway (PPH) programs with different PTOs in order to accelerate examination of patent applications and try to reduce the large existing backlog.
Under the PPH program, participating patent offices agree that when an applicant receives a final decision from a first patent office concluding that at least one claim is allowed, the applicant may request expedited examination for the corresponding claim(s) in a corresponding patent application that is pending in a second patent office.
Below is an overview of the PPH programs currently running in the INPI:
- PPH INPI-USPTO: On January 11, 2016, a PPH pilot program started between the INPI and the United States Patent and Trademark Office (USPTO).
During Phase I of the pilot program, which ran until May 10, 2018, the INPI only accepted patent applications in the oil and gas industry.
On May 08, 2018, the INPI published Resolution No. 218/18, which established Phase II of the program. This new phase has been running since May 10, 2018 and will finish on April 30, 2020, or when 200 applications are accepted, whichever occurs first.
The main difference of Phase II …
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Brazilian biodiversity Law and IP issues
On February 27, 2018, the Brazilian INPI issued a requirement for patent owners or the patent application depositant to report whether during the development of the matter revealed in the patent there has been or not access to the national genetic patrimony or associated traditional knowledge.
This requirement is based on the Biodiversity Law; Law 13,123/2015, that revoked the previous regulation Medida Provisória 2.186/2001. The Biodiversity Law states in Article 12, §2, that before filing a patent application the access to a Brazilian genetic patrimony or traditional associated knowledge must be properly informed to the government. Specifically, Article 47 states that those inventions that have accessed any material of the Brazilian biodiversity will not be patented until doing the register in a government database. This database is named SisGen. and was implemented on November 6, 2017.
This BPTO requirement is applied to all kinds of patents and patent applications.
Those inventions that had access to Brazilian biological material during the previous law must regularize its situation under the Biodiversity Law.
This Biodiversity Law reflects The Convention on Biological Diversity, a multilateral treaty signed by Brazil in 1992 and is regulated by Decree 8.772/2016.
The Biodiversity Law states …
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