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Brazil: Division of Trademark Applications And Registrations
By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.
The Brazilian PTO has postponed the entry into force of the resolution that regulates the division of trademark applications/registrations (Resolution 244, of August 27, 2019) to July 1, 2021. Until this new date, it will not be possible to divide applications or registrations of brands. As a consequence, before the mentioned date, international multiclass deposits, which entered Brazil through the Madrid Protocol, cannot be divided either.
Co-ownership
Brazilian PTO informs that, as of September 15, 2020, co-ownership will become an option in trademark applications, through the following services:
– Code 389 (Trademark registration request with pre-approved specification) – value per class; and
– Code 394 (Trademark registration request with free entry specification) – value per class.
In addition, using service code 349 (Holder transfer note), an order or registration with a single holder may be transformed into an order or registration with more than one holder, also allowing for any future transfers involving any issue in co-ownership.
Source:
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Brazilian PTO and CAS Establish Technical Cooperation Agreement to Strengthen the Fight Against Patent Backlog
BRPTO and CAS, a non-profit division of the American Chemical Society, signed a technical cooperation agreement (ACT) to expedite the examination of patents. ACT was published in the Federal Official Gazette this Wednesday (06/10). The agreement establishes INPI’s participation in a CAS Search Report pilot, with the objective of improving the patent workflow at the Institute.
The technology, which will be tested and optimized, is able to assess similarities with the state of the art from parameters of a patent application important for the examiner’s analysis. In addition, the system combines machine learning and data selected by humans, which improves the results offered.
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Brazil under WIPO’s Madrid Protocol
By Moeller IP Team.
Dear Clients, Colleagues and Friends,
Moeller IP Advisors is happy to inform you that, for the first time, the Brazilian PTO has published, in its Official Bulletin, designations of International Registrations filed via the Madrid Protocol. This gives you the chance to not only file trademarks in the Brazilian national trademark office, but additionally enable the designation of your International Registrations through the WIPO’s Madrid System.
Sounds great, what’s the issue?
While the designation of a trademark application in Brazil has been made significantly easier, the Brazilian PTO has announced that any oppositions made against your trademark will not be published in the WIPO’s Gazette, but exclusively in the national trademark bulletin. This means that any trademark applications made through the Madrid System, and subject to oppositions by third parties, or an official rejection, will not be notified to the trademark holder via the WIPO Gazette but will have to be identified separately.
What’s our solution?
Moeller IP’s Brazil office will offer free monitoring of your trademark designations through the Madrid Protocol in Brazil and inform you of any activity. Any opposition or rejection against your (or your client’s) brand can additionally be handled by our experts on site.
Please feel free to contact us should you require more information.
Yours truly,
Moeller IP Advisors
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New Appellation Of Origin in Brazil (DO)
By Moeller IP Brazil.
The Brazilian PTO published today (May 05th), in the Official Bulletin (RPI) nº 2574, the grant of the geographical indication (IG) “Campanha Gaúcha”, in the type of appellation of origin (DO), for fine white, rosé wines, red and sparkling wines. This is the seventh IG in the state of Rio Grande do Sul for the wine segment.
From now on, all wine producers who are within the demarcated region and follow the rules contained in the regulations for use – called the Technical Specifications Booklet – will be able to use IG in their products. This was granted on behalf of the Association of Fine Wine Producers of the Gaúcha Campaign.
The territorial delimitation of 44,365 km² covers municipalities or districts of: Aceguá, Barra do Quaraí, Candiota, Hulha Negra, Itaqui, Quaraí, Rosário do Sul, Santana do Livramento, Uruguaiana, Alegrete, Bagé, Piraí, José Otávio, Dom Pedrito, Ibaré , Maçambará, Bororé, Encruzilhada, Torquato Severo and Joca Tavares.
The first IG recognized in Brazil was the DO “Região dos Vinhos Verdes” for wines, granted on August 10, 1999. Currently, there are 77 records at the INPI, of which 56 are national (IP) indications and 21 are DO (12 national and nine foreign).
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INPI Brazil | New Extension of Deadlines in Brazil by Ordinance No. 166/2020
By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.
Brazilian PTO published this Tuesday (04/28), Ordinance No. 166/2020, which extends until May 15, 2020, the suspension of deadlines referred to in Ordinance No. 120 and 160/2020, due to administrative measures to prevent infection and the spread of COVID-19.
- The Ordinance applies to all processes pending at Brazilian PTO, regardless of their nature. Therefore, deadlines are suspended for all cases.
- The Ordinance also implies the interruption of the counting of the deadlines that are in progress, which will flow again for the time remaining at the end of the suspension period. In other words, the term will be counted from where it left off.
- The terms that start in this period will start counting after the end of the suspension.
- The use of term suspension is optional and the user can petition at the INPI, through the online systems, if they prefer.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
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INPI Brazil | Brazilian PTO Extends Suspension of Terms Determined by Ordinance No. 120 / 2020
By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.
Brazilian PTO published this Tuesday (04/14), Ordinance No. 161/2020, which extends until April 30, 2020, the suspension of deadlines referred to in Ordinance No. 120 / 2020, due to administrative measures to prevent infection and the spread of COVID-19.Temporary work on teleworking for employees and employees of the Institute was also extended until the same date.
– The Ordinance applies to all processes pending at Brazilian PTO, regardless of their nature. Therefore, deadlines are suspended for all cases.
– The Ordinance also implies the interruption of the counting of the deadlines that are in progress, which will flow again for the time remaining at the end of the suspension period. In other words, the term will be counted from where it left off.
– The terms that start in this period will start counting after the end of the suspension.
– The use of term suspension is optional and the user can petition at the INPI, through the online systems, if they prefer.
Source: http://www.inpi.gov.br/
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Brazilian PTO and EPO Launch Technical and Strategic Patent Partnership
By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.
Agreement between Brazil and Europe
Memorandum of Understanding – Enhanced Technical and Strategic Partnership
Brazilian PTO and the European Patent Office (EPO) signed a Memorandum of Understanding on an Enhanced Technical and Strategic Partnership on Tuesday, November 26th, aiming to improve cooperation between Brazil and Europe in the area of patents. The agreement was signed by BrPTO President Claudio Vilar Furtado and EPO President Antonio Campinos at the Institute’s headquarters in Rio de Janeiro.
BrPTO’s president Claudio Vilar Furtado stressed the importance of the agreement to stimulate investment in innovation and industrial property, focusing on the generation of new patents, especially in partnership.
Agreement aims
– In this agreement between BrPTO and EPO, Brazilians and Europeans are united so that patents are a central element of a business environment that drives innovation – said the president of BrPTO.
The agreement between the EPO and the largest patent office in Latin America aims to strengthen the patent system in Brazil and Europe to encourage innovation and economic development, as well as to promote trade and investment between companies. two regions.
– Brazil is an essential partner for the EPO and an important market for European companies – said EPO President Antonio Campinos, who added: – This agreement is a milestone in our cooperation and is proof of the economic importance of close ties between our regions. Cooperation aims to ensure efficient patent examination and the granting of high-quality patents. This will benefit local innovative agents and international patent applicants, who can increasingly expect similar conditions to protect their inventions around the world.
Memorandum of Understanding – Patent Prosecution Highway (PPH)
During the ceremony, both offices also signed a Memorandum of Understanding to renew their Patent Prosecution Highway (PPH) pilot program. The new PPH, effective December 1st, will be open to patent applications in all technology fields.
In relation to the enhanced technical and strategic partnership agreement, BrPTO and EPO will cooperate in strengthening local capacity to search and analyze patent applications by training and discussing best practices, sharing tools and exchanging databases. patent data. In addition, by examining patent applications corresponding to applications already processed by the EPO, BrPTO will leverage the search reports in its own review process to further enhance quality and efficiency, freeing up resources to support local innovation. The agreement’s activities will be based on the two-year work plan agreed between the two institutions.
Brazil is the largest economy in Latin America and its trade with Europe accounts for over one third of the total European Union (EU) trade with the region. The EU is also the largest foreign investor in Brazil, with investments in various sectors of the Brazilian economy.
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Brazil Expands PPH Patent Grand System
By Carlos Cavalcanti. Managing Partner at Moeller IP Brazil.
PPH expansion
From December 1, 2019, Brazilian PTO begins the expansion of the Patent Prosecution Highway (PPH) system to all technology fields, unifying its rules.
The change aims to simplify procedures for both the user and the PTO and expand the potential of these agreements, which prioritize patent processing and reduce examination steps, helping to speed up the process. On average, considering the patents analyzed via PPH in Brazil in 2019, the concession period is eight months and may reach only one month.
Under PPH agreements, the examination of a patent application can be prioritized in Brazil when it has already been evaluated at a participating national/regional office of the agreement. Similarly, if an application has already been reviewed in Brazil, it may be expedited in the other country with which the INPI has a PPH agreement.
PPH rules
In the models implemented by Brazil with the seven current partners (China, Denmark, United States, Europe, Japan, Prosur and the United Kingdom), each PPH had specific characteristics, such as the maximum number of orders and the technology fields included. Now, with the change, these rules will be standardized for the agreements, highlighting the limit of 400 requests per year for the set of PPHs (one per month for each applicant) and the inclusion of all technical areas.
Source: www.inpi.gov
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BR PTO – Fighting the Patent Backlog
By Vivianne Cardoso Banasiak, Client Relationship Manager
BR PTO – Fighting the Patent Backlog
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 reasonable timeframes. This is a long-standing problem and several measures have been introduced aiming to minimize the big delays. This article presents an overview of the BR PTO’s measures to reduce its patent backlog and how the new Brazilian government intends to deal with this problem.
As mentioned, over the years several actions have been adopted by the BR PTO in an effort to reduce the backlog. However, in 2017 and 2018 the BR PTO implemented and consolidated certain innovative actions that greatly contributed to the reduction of the backlog, including the hiring of more patent examiners, optimisation of the flow and control of processes, automation of procedures, consolidation of policies to encourage productivity (eg, telecommuting), efforts in the scanning of documents still pending an image, the implementation and consolidation of priority examination programmes, the review of former resolutions regarding priority examination of applications and the formalisation and extension of Patent Prosecution Highway (PPH) agreements.
Actions against the patent blocklog
Table 1 summarizes the actions taken by BR PTO against the patent backlog
| Actions | Overview | Rules | |
| Fast track_Patent Examination_General cases
| Applicant aged 60 or above; Applicant suffers 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 | 151/2015 | |
| Preliminary opinion | Applications claiming Brazilian priority (first filed in Brazil). | 123/2013 | |
| Green Technologies | Applications related to eco-friendly and green technologies | 175/2016 | |
| Brazilian priority | Applications first filed at the BRPTO | 212/2018 | |
| Micro and Small entities | Applications filed by Brazilian micro and small entities | 211/2018 | |
| Institutes of Science and Technology | Applications filed by Brazilian Institutes of Science and Technology | 220/2018 | |
| Fast track Patent Examination of pharma related applications | Applications related to diagnosis, prophylaxis and treatment of AIDS, cancer, rare diseases or (pre-defined) neglected diseases | 80/2013 | |
| PPH agreements with different offices all over the world | USPTO | April 30, 2020 | 218/2018 |
| JPO | March 31, 2021 | 184/2017 and 235/2019 | |
| EPO | November 30, 2019 | 202/2017 | |
| SIPO | January 31, 2020 | 209/2018 | |
| UKIPO | July 31, 2020 | 222/2018 | |
| PROSUR (Argentinian, Chilean, Colombian, Costa Rican, Ecuadorian, Paraguayan, Peruvian and Uruguayan Patent Offices) | June 30, 2019 | 224/2018 and 229/2018 | |
| DKPTO | August 31, 2020 | 223/2018 | |
| Recruitment of new examiners | More than 200 new patent examiners. Total of 332 patent examiners | ||
| Optimization of internal procedures – Guidelines | Utility Model | 298/2012 | |
| Patent exam_Block I – Title, Specification, Claim Chart, Drawings and Abstract | 124/2013 | ||
| Patent Exam – Biotechnology Inventions | 144/2015 | ||
| Patent Exam – Computer implemented inventions | 158/2016 | ||
| Patent exam_ Block II – Patentability | 169/2016 | ||
| Patent exam – Chemical Field | 208/2017 | ||
| Code 6.20
| Analysis of patents using the results of searches in other national or regional patent offices. | 227/2018 | |
Moreover, in 2018 an external consultancy evaluated the BR PTO procedures and mechanisms of recruitment / training of examiners. The consultancy held at BR PTO involved the UK Ministry of Foreign Affairs and the British Intellectual Property Institute (UKIPO), with the support of the former Ministry of Industry, Foreign Trade and Services (MDIC), aiming to optimize the internal procedures in order to reduce the patent backlog.
Techincal partnership with CAS
As recently reported in our blog, another measure that the BR PTO adopted to mitigate the negative effects of its patent backlog was the technical partnership with CAS (American Chemical Society) for the use of artificial intelligence tools to expedite the examination of patent applications. It was initiated on January 8, 2019 with the aim 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.
All these efforts are showing positive results. It was observed a high increase (77.5%) in patent grants, rising from 6,250 in 2017 to 11,090 in 2018, and a reducing by 7.4% in the patent backlog with respect to 2017. As a result, BR PTO intends to maintain and expand the fast track options, entering into, for instance, new PPH agreements with Russia (ROSPATENT), South Korea (KIPO), Israel (ILPO) and Mexico (INPI).
The Automatic Grant System
However, despite all the efforts, the patent backlog is still massive_ the year 2018 closed with 208,341 patent applications pending a first instance decision _ leading the BR PTO to propose, by far, the most controversial action to mitigate the problem: The Automatic Grant System_ a new Regulation for a simplified allowance procedure that would establish the rules for an application to be automatically allowed (without substantial examination). Until today, the Regulation has not been implemented.
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. The INPI Action Plan of 2018 states the challenging goal of reducing the average decision time to 5 years from the filing date. Thus, the battle against the patent backlog in the BR PTO really seems to be based on the simplification and streamlining of technical procedures for examination of patent applications by using the work already done by other patent offices in the world. Such strategy is in line with the INPI Action Plan of 2018.
The arrival of 2019 has been accompanied by many changes in the Brazilian Patent Office (BPTO). On January 1st, 2019, Brazil´s new president, Mr. Jair Bolsonaro, took office and, on February 11th, 2019, Mr. Claudio Vilar Furtado was announced as the new president of the BR PTO. In one of his first speeches, Mr. Furtado reiterated that the goal is to arrive in 2021 with a patent backlog of 5 years (from the filling date) and that, in a first moment, the automatic granting procedure is not considered as a possibility. However, he pondered that if this goal is not achieved, he may reconsider the automatic granting procedure as a solution.
BR PTO Conclusions
As a conclusion, and in face of the goals established for BR PTO in the coming years, it is clear that a deep paradigm shift is going to happen at the BR PTO. Brazil has the largest economy in Latin America and an efficient patent system, guaranteeing satisfactory safeguarding of rights, is of major importance to foreign investors and to Brazilian progress.
Mr. Furtado has the mission of reforming and reorganizing the current system established at the BR PTO. We will see how these changes will impact the Industrial Property in Brazil and if the BR PTO will finally win the battle against its massive patent backlog. After all, the property right laid down in the National Constitution and the Industrial Property Law aims to boost the country’s technological and economic development.
Sources:
www.interfarma.org.br/noticias/1846
www.iam-media.com/patenting-brazil
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BR PTO the Final Battle Against the Patent Backlog: Resolutions 240/2019 and 241/2019
By Vivianne Cardoso Banasiak, Client Relationship Manager
Solution against the patent blocklog
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.
Resolutions 240/2019 and 241/2019
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 proceeding conducted by the BR PTO.
In general terms, the difference between these two resolutions rests on the fact that Resolution 241/2019 regulates the simplification of technical procedures for examination of patent applications (pending a 1st technical examination) by using the work already done by other patent offices in the world.
The Resolution 240/2019 regulates the examination procedures of patent applications (pending a 1st technical examination) where no search has been performed by other patent offices in the world. For patent applications examined under the new Resolutions, the BR PTO will publish a pre-examination requirement under two new codes: 6.21 (for Resolution 241/2019); and 6.22 (for Resolution 240/2019).
Requirements for resolutions 240/2019 and 241/2019
The Resolutions are applicable to patent applications that fulfil the following requirements:
| Resolution 240/2019 | Resolution 241/2019 |
| No first technical examination shall have been carried out by BR PTO; | No first technical examination shall have been carried out by BR PTO; |
| No request for any type of priority examination shall have been requested to the BR PTO; | No request for any type of priority examination shall have been requested to the BR PTO;
|
| No third party observation petition shall have been presented by any entity or ANVISA*;
| No third party observation petition shall have been presented by any entity or ANVISA*;
|
| No corresponding patent application with prior art searches carried out by Patent Offices, International or Regional Organizations. | The existence of a corresponding patent application with prior art searches carried out by Patent Offices, International or Regional Organizations. |
| Filing date until 31st December, 2016 | Filing date until 31st December, 2016 |
*ANVISA: Brazilian Health Regulatory Agency
Whether the patent application does not fulfill the requirements, such exclusion will also fall on its divisional applications.
Once the above-mentioned requirements are met, the BR PTO will publish the pre-examination requirement (codes 6.21 or 6.22) containing:
Under code 6.21:
- the search report with the prior art documents cited in the searches and/or technical examination carried out by Patent Offices of other countries, of International or Regional Organizations;
- a request to adjust the claim and/or present arguments related to the patentability requirements in light of the prior art documents.
Under code 6.22:
- the search report with the prior art documents: search carried out by Brazilian patent examiners;
- a request to adjust the claim and/or present arguments related to the patentability requirements in light of the prior art documents.
The applicant will have a period of 90 (ninety) days to fulfill the requirement of the pre-examination (reply filed under code 207). Otherwise, the patent application will be shelved.
Whether the new set of claims presented increases the number of claims submitted at the time of the examination request the fee for the examination request should be supplemented.
Regarding the patent applications under Resolution 240/2019, whether the search carried out by BR PTO returns only non-relevant documents, the patent will be granted and no pre-examination requirement (code 6.22) will be published.
The Resolutions 240/2019 and 241/2019 will enter in force on 01st August, 2019 and on 22nd July, 2019, respectively. The Resolution 227/2018 will be revoked on 22nd July, 2019 by Resolution 241/2019.
Source: www.inpi.gov.br
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