By Vivianne Cardoso Banasiak, Client Relationship Manager
The year of 2018 was marked by harsh criticism on how the Government was dealing with the Brazilian Patent Office’s (BR PTO) backlog problem. However, since January 1st, 2019 Brazil has a new president, Mr. Jair Bolsonaro, establishing a new political environment. Aligned with the campaign promises, the Brazilian PTO no longer reports to the Ministry of Industry, Foreign Trade and Services, but to the newly created, particularly powerful, Ministry of Economy (which now includes Planning and Foreign Trade). The BR PTO is under the Special Secretariat for Productivity, Employment and Competitiveness, led by Carlos Alexandre da Costa, a former member of the transition team of the new president. On January 8th, 2019, the Ministry of the Economy announced the nomination of Mr. Cláudio Vilar Furtado as the new President of the Brazilian Patent Office. Mr. Furtado is an economist with Doctoral Degree in Business Administration and, aligned with the premises of the new Government, set fairly aggressive goals for BR PTO in the coming years, mainly related to the patent backlog.
For years the BR PTO has struggled to reduce its patent backlog in order to process applications within …Read More
By Vivianne Cardoso Banasiak, Client Relationship Manager
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.
Nevertheless, on 7th 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 …Read More
By Carlos Cavalcanti, Managing Partner at Moeller IP Brazil
Brazilian PTO is initiating the Backlog Combat Project to substantially reduce the number of pending patent applications over a 2-year period. To achieve this goal, the preliminary requirements will be established, according to Resolutions 240/19 and 241/19, published in Official Bulletin under dispatch codes 6.21 and 6.22. The dispatch of code 6.21 will be issued to the corresponding search requests available in other offices while dispatching code 6.22 to the corresponding no search request available. Thus, the following codes will be listed in the Bulletin Table of Orders – Patent Section:
6.21 – Preliminary requirement – Application with searches made by other Patent Offices. Suspension of the progress of the patent application which, for regular instruction, will await the answer or challenge of the requirements formulated. The non-manifestation of the applicant within 90 (ninety) days of this date will result in the final denial of the application. The preliminary requirement opinion (6.21) will be published as of 7/23/2019.
6.22 – Preliminary requirement – Application without searches made by other Patent Offices. Suspension of the progress of the patent application which, for regular instruction, will await the answer or challenge of …Read More
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
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.
The Brazilian Senate Plenary approved on Tuesday (2) the bill that creates rules for special protection of “high reputation” brands. PLC 86/2015 allows the holder of an industrial trademark to request the Brazilian PTO (Inpi) to recognize this title at any time. The text has been modified and will have to be returned to the Chamber of Deputies.
“High reputation” is a classification that guarantees a brand protection in all markets, not just the one in which it operates. With this recognition, no other company can be registered with the same name, even if it is from another branch. Inpi currently recognizes 41 “high reputation” brands.
PLC 86/2015 regulates the Industrial Property Law (Law 9.279 / 96) to specify that “high reputation” may be requested at any time. Currently, only an INPI internal standard addresses this issue. According to the rule, the interested parties must wait for a third party to request the registration of the same mark in another branch.
The text also determines that, in case of approval of the application, the recognition of its “high reputation” will be noted in the trademark register. Thus, the owner of the …Read More
By Maria Belen Priore, Patents Department
We hereby inform the last news published by the Brazilian INPI’s official gazette in the past two weeks.
We would like to highlight two new rules, in where we found special interest that may benefit our clients.
The Official Gazette number 2515 launched a Resolution under number 236/19 that establishes the beginning of phase IV of the pilot project to accelerate examination for small and medium-sized Brazilian companies.
Official Gazette number 2516 publishes a normative instruction that aims to improve the Brazilian INPI’s performance, regarding the appeals submitted against rejections of trademarks and industrial designs, which are still pending of resolution, due to the backlog suffered.
The INPI launched this new normative instruction under number 101/19 which encourages the sectors that are responsible, to solve 31.000 pending resolutions in a year’s time.
This normative instruction establishes new transitory rules, including the issuance of a decree that will be dictated by the sectors DIRMA (Trademarks, Industrial Designs and Geographical Indications Direction) and CGREC (General Coordinator of Appeals and Administrative Proceedings of nullity). This decree will determine criteria to be applied in order to comply with this instruction, and shall be issued as soon as …Read More
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.…Read More
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.
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 …Read More
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 …Read More