This website uses cookies so that we can provide you with the best user experience possible. Cookie information is stored in your browser and performs functions such as recognising you when you return to our website and helping our team to understand which sections of the website you find most interesting and useful.
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 (Resolution 80/2013 and 217/2018).
In this respect, all the abovementioned Resolutions, namely 151/2015, 236/2019, 175/2016, 212/2018, 80/2013 and 217/2018, will be revoked.
The main purpose of the new rules is to standardize the requirements for a patent application to be eligible for a priority examination program, in order to facilitate the process both for the applicant and the BPTO. It is expected that the procedure to check whether the patent applications meet the mandatory conditions for the priority examination to be granted is simplified. The ultimate goal is to expedite the examination of patent applications, as part of the BPTO’s efforts to improve the Brazilian patent system and reduce the backlog.
The changes also include some administrative acts. For such reason, some new service codes have been created.
According to the BPTO, with the new rules, the time to analyze whether a patent application is eligible for a programme should be up to one month and the application should be examined in about four months.
The new Resolution and Instruction will enter in force on July 01, 2019.
Source: www.inpi.gov.br
Read More 0
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 America, only Colombia, Cuba and Mexico are part of the Protocol.
As previously explained in our blog, with Brazil’s upcoming adhesion to the Madrid Protocol, the INPI needs to overcome a series of obstacles for a smooth integration into the Protocol requirements.
Firstly, as a rule of the Protocol, the examination of an application must be carried out within 18 months from the filing date. This was one of the main issues to be solved by the INPI, due to its known backlog problems.
However, as reported in our blog, according to the 2018 Activity Report, the INPI is already complying with this requirement, since 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 (Figure 1). According to the INPI´s Strategic Plan 2018-2021, which was published in October 2018, the goal is to further reduce the processing time to 8 months in applications with opposition and to 4 months in applications without opposition.
Figure 1: Trademark examination time (in months)
Secondly, the Draft Legislative Decree No. 98/2019 establishes Spanish and English as the possible languages for a trademark application filed through the Madrid System. Taking into account that the INPI’s working language is Portuguese and all applications are filed in this language, the INPI´s operational procedures will have to be changed, the IT systems updated and the staff trained.
Finally, the INPI will have to implement further relevant measures to align with the procedures of the Madrid Protocol, such as:
– the processing of a trademark registration in a multi-class system (e.g., the possibility of requesting the protection of more than one class of product or service in a single application), which is not an option under current INPI practices; and
– the registration under a co-ownership policy (e.g., the possibility of a trademark application/registration being held by more than one owner). Even though the Brazilian system already allows for multiple owners of a single trademark, the INPI has been reluctant to accept and implement this option, for administrative and organizational reasons.
Currently there are public consultations open regarding the implementation of the above measures. The consultation about multi-class registrations will close on June 13, 2019, whereas the one regarding co-ownership will be open until June 20, 2019.
Adhering the Madrid Protocol could boost exports and internationalization of national brands abroad, and make it easier for international companies to operate in Brazil. Moreover, Brazil’s adhesion to the treaty could even prompt other Latin American countries to join soon.
Source: http://www.inpi.gov.br
Read More 0
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)
Read More
0
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.
This 6.6.2 code of formal requirement will not be issued automatically by the INPI, conversely, only if the INPI understands that there is a possibility that the patent has been obtained through access to the Brazilian genetic heritage, then the applicant will be asked to comply with this requirement.
This will be regardless of whether the patent application has previously received a requirement of this nature (under codes 6.6 or 6.6.1) and even in the following situations:
- The INPI can ask applicants to meet this requirement again, even to those who already responded that there was access to genetic heritage to build the patent, but this access is still in process of regularization before the “CGEN” (Genetic Heritage Management Council of Brazil).
- It can be also asked if the applicant already informed that there was access to the genetic heritage when submitting the application, however it did not include the registration number or authorization of genetic access obtained before the CGEN at the moment of submitting the application.
- It is possible that the code 6.6.2 is issued in applications that were submitted on paper and in which there was no information, at the time of submission, whether or not there was access to the genetic patrimony.
The non-manifestation of the applicant within a 60(sixty) days term counted from the publication of the code in the official gazette, shall have as a result the application shelved, in accordance with Art. 34 of the Brazilian patent law no. 9279.
– 6.6.3 – Formal requirement – sequence listing: The submission of sequence listing (of nucleotides and/or amino acids) through electronic media by complying with Resolution 187/2017, has now to be accompanied with a payment generated by Collection Union Guide (GRU) under code 207.
The non-manifestation of the applicant within 60 (sixty) days from the publication of the code in the official gazette, will have as a result the application shelved, in accordance with Art. 34 of the Brazilian patent law no. 9279.
Source: http://www.inpi.gov.br/
Read More 0
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 backlogs in the world. Such measures comprise a 25% increase in its professional staff, including the recruitment of more than 200 new examiners, the optimization of internal procedures, improvements in the electronic systems, as well as the launch of several Patent Prosecution Highway (PPH) programs.
Source:
Read More 0
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 goal is to further reduce the processing time to 8 months in applications with opposition and to 4 months in applications without opposition.
Industrial designs
The 2018 Activity Report also shows a 63% reduction in the backlog of industrial designs, from 9,288 applications pending in December 2017 to 3,433 in December 2018.
During the same period, there was a 40.3% increase in the number of industrial design registrations, from 6,220 to 8,725. In addition, there was a slight increase (1.9%) in the number of filings, rising from 6,000 in 2017 to 6,111 in 2018 (Figure 2).
Figure 2: Industrial design filings (1999-2018)
Patents
Since 2016 the INPI has been introducing several measures with the aim of tackling one of the biggest patent backlogs in the world, such as a 25% increase in its professional staff, including the recruitment of more than 200 new examiners, optimization of internal procedures, and improvements in the electronic systems.
Moreover, the INPI has launched several Patent Prosecution Highway (PPH) programs since 2016 in order to expedite patent examination. Currently the INPI has running PPH programs with the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), as well as the Argentinian, Chilean, Colombian, Costa Rican, Paraguayan, Peruvian and Uruguayan Patent Offices, all of which are members of the IP Collaborative Project PROSUR. There are also PPH programs with the European Patent Office (EPO), the State Intellectual Property Office People’s Republic of China (SIPO), the United Kingdom Intellectual Property Office (UKIPO) and the Danish Patent and Trademark Office (DKPTO).
As indicated in its 2018 Action Plan, the INPI further intends to enter into new PPH agreements with Russia (ROSPATENT), South Korea (KIPO), Israel (ILPO) and Mexico (INPI).
However, despite these efforts, the 2018Activity Report continues to show worrying numbers.
Even though there has been a high increase (77.5%) in patent grants, rising from 6,250 in 2017 to 11,090 in 2018, and the patent backlog has been reduced by 7.4% with respect to 2017, the year 2018 still closed with discouraging backlog statistics: 208,341 patent applications are still pending a first instance decision (Figure 3).
Figure 3: Patent applications pending final decision (2009-2018)
As for patent filings, there has been a slight reduction from 28,667 in 2017 to 27,551 in 2018 (-3.9%).
According to the 2018 Activity Report, the average decision time for patent applications in Brazil from filing is currently 10 years, with pharma and IT patent applications reaching a maximum average of 13 years (Figure 4).
Figure 4: Average decision time for patent applications (in years)
The INPI´s Strategic Plan 2018-2021 states that the goal is to reduce the average decision time to 5 years from the filing date. However, this document indicates that the achievement of this goal depends on the approval of the most radical and controversial measure aimed at addressing the patent backlog that the INPI has proposed: an automatic granting procedure of patent applications that were opened to public consultation in 2017.
According to the proposal, if the procedure is enacted, a patent application (excluding pharmaceutical applications) filed or with the PCT’s national phase initiated up to the date of publication of the resolution and with examination requested, will be granted within 90 days without any substantive examination, after the issuance of a notice of admissibility in the simplified procedure, provided that third-party observations (pre-grant oppositions) have not been filed against said application. Applicants may request their patent applications to be excluded from the automatic granting procedure so it is subjected to the standard substantive examination.
Nonetheless, at the time of writing this article, the automatic granting procedure, which was proposed by the INPI together with the former Ministry of Industry and Foreign Trade and Services (MDIC), has not yet been approved.
Moreover, since Brazil´s new president, Jair Bolsonaro, took office on January 1, 2019, the INPI no longer depends on the MDIC, but to the Special Secretariat for Productivity, Employment and Competitiveness of the newly created Ministry of Economy.
Source: http://www.inpi.gov.br
Read More 0
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 Examination Guidelines).
This useful tool for every IP operator was issued after a public consultation occurred between August 11th and September 29th 2017, in which the Brazilian PTO received about 208 contributions from 10 different participants which were discussed and answered by the Standing Committee for the Improvement of Procedures and Examination Guidelines.
Source: http://www.inpi.gov.br/
Read More
0
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 looking to construct and execute deals in the green technology space.
The WIPO GREEN network:
- helps facilitate commercial relationships and transactions by connecting green technology providers and seekers, and acting as a gateway to a range of relevant services;
- hosts a freely accessible online roster of green technology consultants and service providers, offering expertise in a wide range of areas including IP management, licensing and investment;
- acts as a gateway to useful IP services, such as WIPO’s Arbitration and Mediation Center.
Through the network, members can meet a wide range of stakeholders – including SMEs, multinational companies, intergovernmental organizations, investors and academics that provide a new opportunity for collaboration and partnership.
The WIPO GREEN Network has grown to reach over 6,000 members and subscribers across 170 countries in 2017. The expansion of our Network continues. Latin American partners include:
- Brazilian Forum of Innovation and Technology Transfer Managers (FORTEC), Brazil
- Brazilian Institute of Industrial Property (INPI), Brazil
- SOLBEN, Mexico
Only Brazilian and Mexican partners have been involved from the beginning of the project, which leaves a large field of expansion in Latin American in the near future. It also denotes the need of increasing the efforts to achieve conscience developing, sharing and implementing green technologies in this vast area of the planet.
Source: http://www.wipo.int/
Read More
0
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 is the expansion of the technological fields accepted in the program: patent applications related to information technology will be now accepted, as well as patent applications in the oil and gas industry.
- PPH INPI-JPO: On April 1, 2017, a two-year or 200 application PPH pilot program started between the INPI and the Japan Patent Office (JPO). The INPI only accepts PPH applications concerning the following technical fields: information technology and machinery, mainly for automobile-related technologies.
- PPH PROSUR: On October 1, 2016, a PPH pilot program started between the Argentinian, Brazilian, Chilean, Colombian, Paraguayan, Peruvian and Uruguayan PTOs, all members of the regional collaborative project on Industrial Property PROSUR. This program has no maximum number of requests and it is not limited to any technical field.
On July 7, 2017, Costa Rica became a PROSUR member (together with Panama and the Dominican Republic), and in September 2017, a PPH agreement signed between the Costa Rican PTO and its PROSUR counterparts entered into force.
The Memorandum of Understanding (MoU) signed between the PROSUR members to implement the PPH contained a declaration by the Brazilian PTO stating that the fulfillment of the program in Brazil would be subjected to the approval by the corresponding Ministry. On December 2016, Brazil received favorable authorization to implement the PPH program, which finally started on July 1, 2017.
The MoU also included a declaration by the Brazilian PTO stating that only patent applications with first filing in a PROSUR country member or patent applications filed in any PROSUR country member as PCT Receiving Office would be eligible in Brazil.
- PPH INPI-EPO: On December 1, 2017, a PPH pilot program started between the INPI and the European Patent Office (EPO). The pilot program will run for a period of two years, or until reaching 600 applications. The INPI only accepts PPH applications concerning the following technical fields: chemistry and medical technology, except drugs.
- PPH INPI-SIPO: On February 1, 2018, a PPH pilot program started between the INPI and the State Intellectual Property Office People’s Republic of China (SIPO). The pilot program will run for two years, or until reaching 200 applications. In theory, only 20 of these applications may be accelerated based on the first examination of the SIPO. The INPI only accepts PPH applications concerning the following technical fields: information technology, packages, measuring technology or chemistry, except drugs.
- PPH INPI-UKIPO: On August 1, 2018, a PPH pilot program started between the INPI and the United Kingdom Intellectual Property Office (UKIPO). The pilot program will initially run for two years, or until reaching 200 applications. Each office will accept only 100 requests to the PPH Program per year. In this PPH program, INPI only accepts PPH applications concerning the following technical fields: Biotechnology (except drugs), electric machines and devices, audiovisual technology, telecommunications, digital communication, basic communication processes, computer technology, IT management and semiconductors.
- PPH INPI-DKPTO: On April 18, 2018, the INPI and the Danish Patent and Trademark Office (DKPTO) signed a MoU to start a PPH Program on September 1, 2018. The pilot program will initially run for two years, or until reaching 200 applications. Each office will accept only 100 requests to the PPH Program per year. It is still under negotiation whether or not the program will be limited to patent applications in specific technological fields.
The INPI further intends to enter into new PPH agreements this year with Russia (ROSPATENT), South Korea (KIPO), Israel (ILPO) and Mexico (IMPI), as indicated in its 2018 action plan.
A Brazilian patent application has to comply with the following requirements to enter a PPH pilot program:
- It must have been filed first with the INPI or the other participating office.
- It must have been published or a request for early publication must have been filed (in the case of PCT applications, the entry into national phase must have been published).
- The substantive examination must have been requested.
- The substantive examination cannot have started.
- The examination proceedings must not be suspended in order to comply with a requirement by the INPI.
- All annuity fee payments must be up to date.
- Another request for fast-track examination must have not been granted and published.
- It must not be a divisional application, with the exception of those divisional applications resulting from the direct division of the original filing and derived from a lack of unity objection raised by the Office of First Examination.
- It must not be subjected to a lawsuit.
According to information published by the INPI, the average time to assess the eligibility of requests to participate in the program is 70 days, the average time from the PPH request until the first examination is issued is 160 days, and until a decision is made, 220 days.
Seventy-two requests were filed to participate in the Phase I of the PPH program with the USPTO, from which 45 already have been granted a patent. Up until August 7, 2018, 70 requests were filed to participate in the PPH program with the JPO, from which 26 already have been granted a patent.
Regarding the PPH INPI-EPO, only two patents have already been granted from the 25 requests filed to enter the program up until August 7, 2018.
The PPH INPI-SIPO program has received the most requests: 146 up until August 7, 2018, from which 10 patents already have been granted. In contrast, the PPH between the INPI and PROSUR has only received 3 requests, and no patent has been granted yet.
Despite a positive impact, the current PPH programs in Brazil have some limitations. In all programs, it is required that the patent application has been firstly filed either with the INPI or with the corresponding participating office. Additionally, except in the PPH INPI-PROSUR, only a limited number of requests are being accepted in each program and only for patent applications related to specific technical fields.
Remarkably, pharmaceutical patent applications, for which the average decision time at the INPI is currently 13 years, are excluded from eligibility in all PPH programs except in the INPI-PROSUR.
Source: http://www.inpi.gov.br
Read More 0
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 in Articles 36 to 38 during a period of one year after the SisGen implementation all the Brazilian biodiversity accesses that are irregular can be regularized. This term, will finish in 06/11/2018. After this date any irregular access to the Brazilian biodiversity will be severely penalized with high fines.
Several kinds of access are considered: For instance, the use of part or all of a living being, including microorganisms and viruses, being is dead or alive. Also, substances from the living being metabolism or the expression of phenotypes are considered access to Brazilian genetic patrimony. Human materials are excluded from this obligation.
The Instruction 23/2017 of Ministério da Agricultura Pecuária e Abastecimento (MAPA) states the plant species that are not considered Brazilian genetic patrimony as for instance Saccharum spp. This Biodiversity Law is also applied to foreigners. Companies and Research Institutes from other countries should establish partnerships with local research institutes in Brazil and they will be required to register in SisGen’s database.
Also, the shipment and/or delivery of material from Brazil to other countries should be registered in SisGen’s database.
This subject is new and many issues are still being discussed in Brazil. Please check back to Moeller’s blog to see updates about any developments on this matter.
Source: http://www.inpi.gov.br/
Read More
0