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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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Argentinian Patent and Trademark Office Extends Suspension of Terms Determined by Resolution Nr. 34-2020
The Argentinian Patent and Trademark Office published the Resolution Nr 34-2020 in the Electronic Official Bulletin of April 13, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020 and 22-2020, until April 26, 2020, inclusive.
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.
Source: https://www.boletinoficial.
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INPI Brazil | On COVID-19 Priority Examination for Pharmaceutical Products and Processes
The Official Bulletin 2570 from April 07, 2020, published the right to request priority examination for pharmaceutical products and processes and equipment and/or materials for use in health for the diagnosis, prophylaxis, and treatment of Covid-19.
The transcript of the Resolution issued follows below:
Art. 1 BRPTO Resolution No. 239, from June 4, 2019, published in RPI No. 2528, July 18, 2019, becomes effective with the following changes:
“Art. 12-A. The patent process in which one the object is related to pharmaceutical products and processes and equipment and/or materials for use in health for the diagnosis, prophylaxis and treatment of Covid-19 will have priority in the processing.
- 1 The request for priority processing must be filed until June 30, 2021, by the applicant, attorney or interested third party, individual or legal entity, and must contain a clarification indicating the relationship of the matter of the process with the diagnosis, prophylaxis of the population and/or treatment of patients at Covid-19.
- 2 The Directorate of Patents, Computer Programs and Topographies of Integrated Circuits (DIRPA) may regulate the submission and examination process and even temporarily suspend, in whole or in part according to the effectiveness of the service provision, the receipt of requests of the caput of the article for patent processes.
Source: http://www.inpi.gov.br/
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The European Patent Office – Patent Index 2019
By José Santacroce. Partner and Head of Patent Department
Patent Index 2019
The European Patent Office (EPO) just published its Patent Index 2019, below a summary of the key statistics.
The EPO received last year a record 181 000 patent applications, 4% more than in 2018.
In total, nearly half of all patent applications came from companies based in Europe, with Germany alone accounting for some 15%. From the other regions, US firms dominated with a quarter of all applications, followed by companies from Japan, China and South Korea.
Origin of patent applications in 2019
In terms of growth, patent applications filed by European companies increased modestly. There was a strong rise in demand from the US. The steepest growth rates were posted by Asian companies, in particular Chinese and South Korean firms.
Top 10 applicants at the EPO in 2019
- 1.HUAWEI 3 524
- 2.SAMSUNG 2 858
- 3.LG 2 817
- 4.UNITED TECHNOLOGIES 2 813
- 5.SIEMENS 2 619
- 6.QUALCOMM 1 668
- 7.ERICSSON 1 616
- 8.ROYAL PHILIPS 1 542
- 9.SONY 1 512
- 10.ROBERT BOSCH 1 498
Top 10 countries for patent applications at the EPO in 2019
Among European countries with large volumes, the greatest increases in filings came from Sweden, the UK, and Switzerland. Filings from Germany remained stable and Italy saw moderate growth, while France and the Netherlands saw decreases.
Looking at countries with mid-range patenting volumes, Spain saw the biggest rise in applications. There were also increases in filings from Belgium and Austria.
Further significant growth was seen from companies in Portugal, Ireland, and Norway, albeit from small overall patenting volumes.
The patent applications filed with the EPO in 2019 also indicate Europe’s position as a key market for the next wave of digital transformation technologies.
Technical fields with most patent applications in 2019
Digital communication: The new top technology field at the EPO
Digital communication was the new top technology field at the EPO, reflecting the rapid development of 5G technologies.
China, the US, and Europe were the most active regions of origin. They each account for roughly a quarter of the patent applications in this field.
Computer technology: The second fastest-growing field
It was fuelled by the growing importance of Artificial Intelligence. Patent applications concerned especially machine learning, data retrieval, image data processing, and pattern recognition. Overall, US companies led this field, with European applicants not far behind.
The dominant position of digital technologies was clearly reflected in the list of leading applicants. Huawei topped the table, followed by Samsung, LG, United Technologies and Siemens.
Overall, European companies retained the largest share in seven of the ten most active technology fields. These include transport, where Europe continued to excel in the automotive sector. The same was also true for clean energy technologies.
Source: www.epo.org
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Patent Linkage in Mexico
By Moeller IP.
Patent Linkage in Mexico
The Mexican linkage system refers to the cooperation between the Mexican Institute of Industrial Property (IMPI) and the Federal Commission for Protection against Health Risks (COFEPRIS) to avoid the granting of marketing authorizations for allopathic drugs which may infringe any in-force patent.
This linkage system was issued on September 19, 2003. It is established in articles 167 bis of the Health Supplies Regulations and article 47 bis of the Industrial Property Regulations which state the system procedure.
Authorization for an allopathic drug
Allopathic drugs are defined in article 224 of the Mexican Health Law as natural or synthetic substances having therapeutic, preventive or rehabilitative effects, which may be identified by their pharmacological activity, physical, chemical or biological characteristics and are presented in a pharmaceutical form.
Whenever a marketing authorization application for an allopathic drug is submitted to COFEPRIS, the applicant is required to either submit the documents which demonstrate that owns the patent or patents related to the active pharmaceutical ingredient (API), possess the corresponding license, both registered at the IMPI, or, according to the Mexican Linkage Gazette, declare under oath that it complies with the provisions applicable in patent matters.
In the case of the latter, COFEPRIS will request IMPI to confirm this statement. COFEPRIS will file a form detailing the following information about the marketing authorization application and deliver it to IMPI:
- Applicant of the marketing authorization
- Name of the API, salts as APIs or International Nonproprietary Name
- Chemical name according to the International Union of Pure and Applied Chemistry
- Structural formula of the API
- Pharmaceutical formulation, API and excipients
- Dosage form
- Therapeutic indications
- Dosage
- Drug presentations
- Drug characteristics
- Any additional information submitted by the applicant
The above information is considered confidential, thus only COFEPRIS and IMPI are aware of its contents.
Authorization procedure
Based on the information received, IMPI will have ten business days to confirm whether an in-force patent may be infringed. If no patent is found to be infringed, the marketing authorization application will comply with this administrative requirement and follow its normal procedure. Otherwise, IMPI will notify COFEPRIS which in turn will notify the applicant of the possible infringement. COFEPRIS will request the applicant to submit the corresponding license and if the applicant fails to do so the marketing authorization will be denied.
Mexican Linkage Gazzete
Regarding the Mexican Linkage Gazette, this document is published semi-annually by IMPI and its purpose lies in keeping a record of the in-force Mexican patents associated with specific APIs.
Patents listed in the Mexican Linkage Gazette include those of composition of matter, formulations, medical uses or combination thereof. These are listed automatically by the IMPI whenever a patent is granted. Alternatively, patent owners may also request the Mexican PTO to include a certain patent in the Gazette. Lastly, patents related to processes or methods of producing the drugs are expressly excluded from being published in the Mexican Linkage Gazette.
Conclusions
Mexican Patent Linkage System is limited to cases related to IMPI and COFEPRIS involving potential patent litigation between patent owners and applicants submitting new marketing authorizations. It was designed to avoid unnecessary litigation from these private parties, thus Its current design does not allow the direct participation of the patent owners or applicants of new marketing authorizations.
Patent owners may participate indirectly through ensuring its most relevant patents are listed in the Mexican Linkage Gazette. On the other hand, applicants of new marketing authorizations may submit additional information to argue its product does not infringe the patents listed in the Mexican Linkage Gazette.
Given the limited participation from the parties in the current Patent Linkage System so far, patent owners have resorted to filing patent infringement procedures to prohibit the production and commercialization of the infringing products while applicants of new marketing authorizations have resorted to nullity actions over patents. Both procedures are handled by the IMPI and its ruling may be appealed before the Federal Court of Administrative Justice, which, in turn, may be appealed before the Collegiate Courts.
Overall, in our opinion, the Mexican Linkage System remains imperfect as it could benefit from increasing the transparency of the procedure to both parties, patent owners and applicants of new marketing authorizations.
Source: www.gob.mx/impi
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Newly Amended China Patent Examination Guidelines on Computer-Implemented Inventions (CII), Effective February 1, 2020
By José Santacroce. Partner and Head of Patent Department.
Guidelines Patent Examination
The China National Intellectual Property Administration (CNIPA) formally announced on December 31, 2019 the newly amended Patent Examination Guidelines will come into effect on February 1, 2020. The Guidelines were amended to clarify the patentable subject matter in patent applications relating to CII.
Most important amendments
The most important amendments are summarized below:
- Section 6 is added to Chapter 9 of Part II of the Guidelines, and regulates the examination of claims that include abstract features such as algorithm features or business method features.
- When examining a claim, abstract features such as algorithm features or business method features should not be simply separated from technical features. The claim should be examined as a whole to analyze aimed technical problems, utilized technical means, and achieved technical effects.
- If a claim merely includes abstract features without any technical features, the claim should be rejected as a rule or method of mental activity under Art. 25 of the Patent Law.
- If a claim includes any technical features besides abstract features such as algorithm features or business method features, and as a whole does not constitute a rule or method of mental activity, the claim should not be excluded under Art. 25 of the Patent Law and should be examined to see whether the claim constitutes a technical solution under Art. 2.2 of the Patent Law.
- When examining whether a claim including algorithm features or business method features constitutes a technical solution, all features in the claim should be considered as a whole. If the claim aims at technical problems, utilizes natural laws as technical means, and achieves technical effects, the solution of the claim is determined as constituting a technical solution under Art. 2.2 of the Patent Law.
- When assessing novelty or inventiveness of a claim, all features including both technical features and algorithm features or business method features should be considered as a whole.
- Nine examination examples of claims that include algorithm features or business method features are provided.
- The specification including algorithm features or business method features should clearly and completely describe the solution used to solve technical problems. On the basis of technical features, algorithm features or business method features should support each other and interact with the technical features.
- Claims of patent applications involving algorithm features or business method features should recite the algorithm features or business method features that support each other and interact with technical features.
Source: www.cnipa.gov.cn
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The European Patent Office (EPO) Publishes Grounds for its Decision to Refuse Two Patent Applications Naming a Machine as Inventor
By José Santacroce. Partner and Head of Patent Department.
EPO – Applications refused
The EPO has published on 27 January 2020 its decision setting out the reasons for its recent refusal of two European patent applications in which an Artificial Intelligence (AI) system was designated as the inventor.
Filed by an individual in autumn 2018, the applications EP 18 275 163 and EP 18 275 174 were refused by the EPO following oral proceedings with the applicant in November 2019, on the grounds that they do not meet the legal requirement of the European Patent Convention (EPC) that an inventor designated in the application has to be a human being, and not a machine.
The machine called “DABUS”
In both applications, the machine called “DABUS”, which is described as “a type of connectionist artificial intelligence”, is named as the inventor. The applicant stated that he had acquired the right to the European patent from the inventor by being its successor in title, arguing that as the machine’s owner, he was assigned any intellectual property rights created by this machine.
In its decisions, the EPO considered that the interpretation of the legal framework of the European patent system leads to the conclusion that the inventor designated in a European patent must be a natural person. The Office further noted that the understanding of the term inventor as referring to a natural person appears to be an internationally applicable standard and that various national courts have issued decisions to this effect.
Moreover, the designation of an inventor is mandatory as it bears a series of legal consequences, notably to ensure that the designated inventor is the legitimate one and that he or she can benefit from rights linked to this status. To exercise these rights, the inventor must have a legal personality that AI systems or machines do not enjoy.
Finally, giving a name to a machine is not sufficient to satisfy the requirements of the EPC mentioned above.
The decisions to refuse the two patent applications can be appealed by the applicant within two months at the EPO’s independent judiciary, the Boards of Appeal.
Source: www.epo.org
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The European Patent Office (EPO) Officially revoke the Broad Institute´s CRISPR patent
By José Santacroce. Partner and Head of Patent Department.
European patent EP 2771468
European patent EP 2771468 relates to the CRISPR/Cas9 gene-editing technology held by the Broad Institute of Harvard and MIT, Massachusetts.
The EPO opposition division had revoked the patent for lack of novelty in view of intermediate prior art. This prior art became relevant because the opposition division did not acknowledge the patentee’s claim to priority from a US provisional application naming more applicants than the subsequent PCT application from which EP 2771468 is derived. Since the omitted applicant had not transferred his rights to the applicants of the PCT application the priority claim was considered invalid.
On 16 January 2020, the EPO Board of Appeal in case T 844/18 dismissed the patent proprietor’s appeal against the decision of the opposition division and thus confirmed the revocation of the patent. The board did not refer questions to the Enlarged Board of Appeal.
Reasons for revocation
The reasons for the board’s decision will be issued in writing in due course.
In 2012, Professor Jennifer Doudna of the University of California, Berkeley and Professor Emmanuelle Charpentier were the first to file a patent for the discovery of CRISPR/Cas9. Subsequently, Professor Feng Zhang at the Broad Institute was granted a fast-tracked patent based on the use of CRISPR to edit the genomes of eukaryotic cells. Since then, both institutions have competed for numerous patents with overlapping rights across multiple jurisdictions.
The Broad’s EPO patent was originally granted based on evidence of their original US patent filings. However the Broad’s earliest US applications, filed in 2012, listed Professor Luciano Marraffini of Rockefeller University, New York, as one of the inventors, but subsequent Broad applications, in the US and Europe do not include him. Because the list of inventors is not the same, the EPO declared the early US filings are not valid evidence that their claim dates back to 2012, and as such cannot be used to show the Broad’s claim predates that of competitors, including UC Berkeley.
The Broad has said that nine of their 21 CRISPR/Cas9 patents in Europe could be affected by the ruling which “does not involve the actual scientific merits of the patent application, but the interpretation of rules that dictate what happens when the names of inventors differ across international applications.”.
Source: epo.org
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EPO and Cambodia Renew Bilateral Cooperation
By José Santacroce. Partner and Head of Patent Department.
A delegation from Cambodia visits the EPO
A delegation from Cambodia led by Senior Minister of Industry and Handicraft Cham Prasidh visited the EPO on 31 October 2019 to meet with a team from the EPO headed by President António Campinos.
President Campinos and Senior Minister Cham reviewed the implementation so far of the EPO’s validation agreement with Cambodia. Under the agreement, which entered into force on 1 March 2018, applicants to the EPO can request validation of their European patent applications and European patents in the country. Cambodia was the first Asian country to recognise European patents on its territory.
“We are proud of the joint work done and results achieved over the past two years,” said EPO President Campinos. “Cambodia is one of the fastest-growing economies in Southeast Asia and now belongs to the group of countries with a solid global patenting strategy. The strengthening of Cambodia’s patent system through the validation agreement with the EPO is good for the local economy. For European companies, it provides further business and investment opportunities by extending the geographic coverage of their European patents to Cambodia.”
Senior Minister Cham said: “The validation system is a part of our long-term strategy to attract foreign investment. It is also an important means to boost national innovation. The validation system offers a shortcut for inventors to have their invention, already patented by the EPO, validated and protected almost immediately. Investors interested in using Cambodia as a springboard for exporting their products to privileged markets will benefit from seeking protection for their invention in Cambodia.”
Bilateral co-operation agreement
During the meeting, the EPO and Cambodia also signed a bilateral co-operation agreement for 2020. It aims at strengthening the capacity of the Ministry of Industry and Handicraft to administer patents and to promote an IP and patent culture in the country. Under the agreement, EPO experts will train staff at the Ministry, and a particular focus will be put on increasing understanding of the usefulness of patent information for universities and small businesses. A series of workshops will also be held to explain the functioning of the patent system to national stakeholders.
Patent applications in Cambodia
Cambodia has so far received 85 patent applications in 2019 (up from 67 in 2018), the majority of them being foreign applications. The Patent Cooperation Treaty entered into force in Cambodia in December 2016. The number of European patent applications for which a validation fee has been paid for Cambodia has risen to more than 60 in the past month alone.
Source: www.epo.org
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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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