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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Brazil Progresses Toward Joining the Madrid Protocol
by Moeller IP Advisors
The Madrid Protocol is an international treaty established to create a centralized system of trademark protection for all the signatory states.
Through the rules of the Madrid Protocol, applicants can protect their trademarks in all member countries: they just need to file a single application in one of the countries’ that are part of the treaty. Procedures are uniformed and the application can be filed in one of the three official languages – English, French or Spanish.
The Madrid Protocol is certainly the most time and cost-effective means of seeking trademark protection internationally. Currently, 100 countries are signatory to the Protocol: Colombia was the first South American country to join in 2012, followed suit by Mexico in the same year.
Some issues have been partially overcome
In November 2016, Brazilian Minister of Industry, Foreign Trade and Services, Marcos Pereira, announced the intention to join the Madrid Protocol, during an official meeting with WIPO Director General Francis Gurry. It was clear, however, that accession to the uniformed Madrid system, although certainly excellent news for all companies operating in Brazil, could prove to be challenging.
For this reason, it was anticipated that the accession would happen not before …
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Want to register a Green Patent in South America? Brazil Made it Quicker for You
By Moeller IP Advisors
The Potential for Green Technologies
Green is certainly an adjective that fits Brazil. Not only because of the abundance of its natural resources, but for several other reasons: Brazil is one of the world leaders in bioenergy – more than 85% of the domestically produced electricity used in Brazil comes from renewable energy sources.
Moreover, the country has been a pioneer in biofuel production from ethanol and is now one of the biggest producers. Not only has the biofuel sector allowed Brazilian companies like Cosan or GranBio to prosper but it has also seen US companies like Shell, Amyris, Solazyme and Cobalt enter the scene, with conspicuous investments in ethanol, biobutanol and biofene production plants.
It goes without saying that fields like alternative energy production or clean transport require a great effort in research and development and constant investments in innovation: patents are the only way to protect such efforts.
However, it is well known that the Brazilian patent system suffers from a chronic issue: the one of the backlog. Currently, the Brazilian PTO’s (Brazil Patent Office) average time for granting a patent is 10 years. This is extremely discouraging for foreign and local companies that …
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Brazilian Domain names and Trademarks Registered by Different Owners: Which One Should Prevail?
Registering a domain name that matches with the trademark is an established course of action for the protection of a company’s IP assets.
In fact, a domain name has the same function as a trademark in the online world: the domain becomes the virtual image of the business.
Sometimes, however, the same domain name and trademark may have been registered by two different owners. The issue is particularly relevant in Brazil, where cybersquatting has been on the rise for several years. But it can also happen that a company registers a domain name identical to a previously registered mark in good faith. As the Brazilian IP law does not regulate domain names, the issue has been tackled by Brazilian Civil Courts, which are still making clarity in a particularly entangled area.
The Legal Panorama: Domain Names in Brazil
Art. 5 of the Brazilian Constitution grants protection to industrial inventions, trademarks and business names but also to other distinctive signs – a category which is likely to include domain names.
Brazil, like many countries, has a “first-to-file” domain name registration policy. FAPESP, the São Paulo Research Foundation, is the organization responsible for registering domain names in Brazil. FAPESP enacted guidelines that …
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New Measures to Cut Down on Brazil Patent Backlog
By Moeller IP Advisors
It is very well known that the backlog is probably the main issue affecting the Brazilian patent system. A patent may take an average of 7-10 years for being granted – and although the Brazilian Patent Office, the INPI, has established a series of special programs or patent prosecution highways to speed up the process for some categories of patents or applicants, these solutions have only partially reduced the issue.
The Automatic Grant System
The Brazilian Government is expected to launch soon an emergency and very controversial measure to cut down on the country patents backlog. According to the plan, INPI will automatically grant around 231.000 patents by 2020, provided the applications do not concern pharmaceutical products.
What does “automatically” mean? The plan provides that all the unopposed applications filed before the rules become effective will be examined by the INPI through a simplified and accelerated examination procedure, not the traditional substantial procedure.
Although these measures seem extreme and even some INPI examiners threatened to go on strike in the wake of the new plan- the patents and international law committees of the Brazilian Intellectual Property Association established that the new rules are not in breach …
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Superior Court of Justice makes first decision on a mailbox patent
By Marta Garcia
On April 20, 2018, Brazilian “mailbox” patent PI9507594-1 by Alexion Pharmaceutical Inc. protecting the drug Soliris® (eculizumab) received an unfavorable ruling by the Brazilian Superior Court of Justice regarding its term of protection.
The Court decided that “mailbox” patents are not entitled to the minimum term of protection provided by Article 40 of the Brazilian Industrial Property Law – 10 years from the date of grant – but instead should be 20 years from the filing date. This decision can still be appealed at the Supreme Court of Justice.
“Mailbox” patents in Brazil are those relating to pharmaceutical and agrochemical products, which were filed in Brazil between January 1, 1995 and May 14, 1997.
Before January 1, 1995, when Brazil adhered to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, patents covering pharmaceutical and agrochemical products were not allowed in the country.
When Brazil agreed to adopt the TRIPS Agreement, in light of its Article 70.8, a transitional period was granted in order to enact new laws that were TRIPS compliant. Article 70.8 of TRIPS establishes that when a TRIPS Member considered pharmaceutical or agrochemical products as non-patentable subject matter, such Member should provide means by …
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Internet of Things in Brazil: Economic Potential and Legal Implications
By Moeller IP Advisors
The concept of the Internet of Things (IoT) is becoming increasingly popular and expert are talking about a “fourth industrial revolution” when referring to the potentials that IoT technologies have to offer.
In simple terms, the Internet of Things consists of a network of physical devices which are connected to the internet or are using wireless technologies between each other. Heart monitoring implants, wearable gears that collect our sleep patterns, webcams that can be activated and monitored through a phone app, or even coffee makers that allow you to schedule brews with a click of the mouse are just ubiquitous and everyday examples of the IoT.
The potential of this technology is enormous for industrial and agricultural purposes as well, like smart supply chain management, smart buildings, smart cities, soil and livestock monitoring and pest control, just to name a few.
The IoT market in Brazil
The analyst firm Gartner predicted that by 2020 there will be over 26 billion connected devices in the world. Report from Goldman Sachs and Cisco seem to confirm this forecast – estimating around 20 billion of connected devices in 2020, going up to 100 billion by 2050.
McKinsey estimates that …
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