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.

Source: http://www.inpi.gov.br/noticias/inpi-e-epo-lancam-parceria-tecnica-e-estrategica-na-area-de-patentes/view

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

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 8^th, 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

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 1^st, 2019, Brazil´s new president, Mr. Jair Bolsonaro, took office and, on February 11^th, 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.inpi.gov.br/

www.interfarma.org.br/noticias/1846

www.iam-media.com/patenting-brazil

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 7^th 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 1^st 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 1^st 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:

*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 01^st August, 2019 and on 22^nd July, 2019, respectively. The Resolution 227/2018 will be revoked on 22^nd July, 2019 by Resolution 241/2019.

Source: www.inpi.gov.br

Brazilian PTO – Patent Backlog Combat Project

By Carlos Cavalcanti, Managing Partner at Moeller IP Brazil

Patent Backlog Combat Project

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:

Preliminary requirement

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 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 (6.22) will be published as of 08/08/2019.

The applicant must comply with the preliminary requirement (dispatches of code 6.21 or 6.22), expressing himself on the documents presented in the search report and promoting the appropriate modifications in the context of the claims. In conjunction with the new claim framework, it is recommended that the applicant submit the descriptive report, summary, and drawings. The applicant will have 90 days to meet both requirements, under penalty of final denial of the application, according to Article 36 of LPI 9.279 / 96.

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

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)

Brazilian Senate Approves Special Protection Bill of “High Reputation” Brands

By Carlos Cavalcanti, Managing Partner Moeller IP Brazil

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 mark will have a document proving his right to special protection. The classification can be challenged at the request of third parties with “legitimate interest” that require the Inpi an examination of the classification substandard.

“The current legislation is silent on the process of recognizing a brand as being highly reputed,” said the rapporteur of the project, former senator Flexa Ribeiro (PSDB-PA), in his opinion.

At the Commission on Science, Technology, Innovation, Communication and Information Technology (CCT), the project has been granted a mandate that the recognition of the high reputation be valid for 10 years, and that the renewal application be justify.

Source: senado.leg.br

Brazilian PTO Continues its efforts to Improve Performance Output

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 possible (after which the term of one year would begin).

Source:  http://www.inpi.gov.br/

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/