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