EPO and Mexico Launch Reinforced Partnership

By José Santacroce. Partner and Head of Patent Department.

Agreement between Mexico and EPO

Memorandum of Understanding (MoU) – Reinforced Partnership

The EPO has signed a Memorandum of Understanding (MoU) on Reinforced Partnership with the Mexican Institute of Industrial Property (IMPI), further strengthening the longstanding co-operation between Europe and Mexico in the area of patents. The MoU was signed on 4 November 2019 in Mexico City by EPO President António Campinos and IMPI Director General Juan Lozano.

“Mexico is a very important partner for us, and our offices have already worked together to support innovation for 25 years” said EPO President Campinos. “Through our joint projects on the Cooperative Patent Classification, the EPO’s online patent search tool EPOQUE Net, comprehensive data exchange and judicial training we have brought our patenting procedures and work more closely in line. We are now entering a new phase in our co-operation, extending it to more strategic areas, with a view to making our patent systems as efficient, user-friendly and relevant as possible for innovators in both regions.”

The IMPI Director General Juan Lozano underlined the importance of the strategic alliance with the EPO to enhance the use of Mexican resources dedicated to the examination of national patents, as well as to accelerate applications previously examined by EPO, issuing “more patents, faster, as well as reducing the backlog”.

Memorandum aims

He said that the MoU will promote the exchange of information and good practices, and the Institute will be able to benefit from training, certification, tools and technical support provided by the EPO in a framework of collaboration.

Through the Reinforced Partnership, the EPO and IMPI will join forces to develop a number of activities aimed at increasing efficiency, timeliness and quality of the patent grant process with a view to promoting investment and technology transfer between Europe and Mexico. The EPO will support IMPI in strengthening search and examination in fast-growing and emerging technology fields such as the Internet of Things (IoT) and Industry 4.0. At the same time, IMPI will make effective use of EPO work products, tools and standards to ensure a high quality, timely and efficient examination of both national first and second filings.

According to figures from the World Bank and the European Commission, Mexico is the 11th largest economy in the world (EUR 2.2 trillion) with a strong focus on manufacturing and a population of almost 130 million. The country has strong macroeconomic institutions, and is open to trade and private investment. The EU is Mexico’s second-biggest export market after the United States.

Source: www.epo.org

New Agreements Between the Brazilian INPI and the Danish PTO

By Vivianne Cardoso Banasiak. Client Relationship Manager.

Agreements between DKPTO and INPI

On 7th October 2019, the Danish Patent and Trademark Office, DKPTO and the Brazilian National Institute of Industrial Property, INPI have signed three agreements whose main objective is to increase and develop the innovation activities, including the generation and trading of Industrial Property assets, such as patents. Agencies working in scientific and technological research in both countries are expected to get closer.

The agreements, which are the result of good collaboration between the Danish and the Brazilian authorities, allow the two countries to join efforts in crucial economic areas such as services, health care, clinical testing, clean energy, and even food and agribusiness.

Agreements

Research, Development, and Innovation (RDI)

The first agreement aims to encourage and develop cooperation between companies from both countries in Research, Development, and Innovation (RDI). Potential participants are already being evaluated in the various regions of Brazil. One of the expected results of this work is the increase in the number of patents and other industrial property assets under co-ownership, i.e. involving two or more partners.

New Patent Prosecution Highway (PPH)

The purpose of second agreement is to improve/expand the process of streamlining the analysis of Brazilian patents in Denmark and vice versa, allowing applicants in Denmark and Brazil to obtain corresponding patents faster and more efficiently. This will be made possible through a new Patent Prosecution Highway (PPH) agreement, broader than the current one (http://www.inpi.gov.br/menu-servicos/patente/projeto-piloto-pph). The existing PPH with Denmark, which began on 01st September 2018 and lasts for two years, includes areas within machinery, environment, and energy. According to the Foreign Ministry and the Brazilian authorities, the next agreement will be expanded to include new areas.

IP Marketplace

The third agreement involves the next stage of an Industrial Property asset: commercialization. It refers to the IP Marketplace, an online trading platform for these assets, working as a display window with trademarks, patents, and industrial designs. Today, around 6,000 users across 157 countries are registered. Participation is free of cost and the platform is open to companies, universities, and the public at large.

IP Marketplace is also a collaboration platform for inventors across the world, who can become acquainted with innovations in their fields of knowledge and meet researchers. According to the president of INPI, Cláudio Vilar Furtado, Brazilian trademarks and patents may be seen by other inventors, who may be interested in trading these assets, bringing positive effects on the innovation system in Brazil and, finally, on the economy as a whole.

Sources:

http://www.inpi.gov.br

http://www.dkpto.org/

http://agenciabrasil.ebc.com.br

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

EPO and INPI Brazil to further enhance their co-operation

By José Santacroce, Partner, and Head of Patent Department

EPO and INPI co-operation

The European Patent Office (EPO) and the National Institute of Industrial Property of Brazil (INPI) have agreed to work towards enhancing their co-operation. EPO President António Campinos and Claudio Vilar Furtado, President of INPI, signed on 22 July 2019 a Joint Statement in this direction following a bi-lateral consultation that formed part of a series of meetings between the EPO and IP offices from the Community of Portuguese Language Countries. They also signed an agreement renewing the INPI’s access to EPOQUE Net, the EPO’s dedicated patent searching tool that contains more than 1.3 billion database entries.

Memorandum of Understanding

In their Joint Statement, the two Heads of Office agreed to work together towards a Memorandum of Understanding (MoU) establishing a pilot project aimed at strengthening the INPI’s capacity for searching and examining patent applications.

President Campinos underlined the importance of co-operation with INPI: “I am pleased to sign this Joint Statement today. As traditionally, Brazil has been an important co-operation partner for the EPO in Latin America. The INPI has great expertise in the patent grant procedure, and with today’s signatures we are paving the way to a closer relationship between our offices, benefitting businesses from both regions.”

President Furtado echoed these sentiments: “The INPI welcomes with enthusiasm the enhancement of the partnership with the EPO. This is an essential step in the modernization of the Institute, a pillar of Brazilian development, to make it a world-class protagonist in industrial property”.

The co-operation between the EPO and Brazil’s INPI started in 2000 with a first technical co-operation project between both offices. This was followed by a number of bilateral agreements enhancing the co-operation to include granting the INPI access to EPOQUE Net (in 2005) and, in 2017, a joint Patent Prosecution Highway (PPH) pilot programme, that allows patent applicants to request accelerated treatment of their applications pending at the EPO and the INPI.

The EPO’s Strategic Plan recognizes that co-operation within Europe and with partners outside of the EPO’s member states has been a contributing factor to economic success. Therefore, as envisioned through several initiatives laid out in the Plan, the Office will continue to reinforce its network through agreements such as the ones concluded between the EPO and INPI.

Source: www.epo.org

 7th International IP Congress: Recent IP Developments in Europe

By Maria  Sol Porro

Seventh International Congress of Intellectual Property

Last June, 7th, the Seventh International Congress of Intellectual Property called ¨Recent IP Developments in Europe¨ was held at the University of Maastricht, Netherlands, organized by the Queen Mary University of London, the Autonomous University of Madrid and the host, the University of Maastricht.

Each year different speakers of the mentioned universities attend this event in order to make brief presentations about the most recent developments in the main areas of intellectual property law in Europe. In this way, new laws, legislative proposals, notable new resolutions or recent doctrines on trademark law, patents, copyright, geographical indications, designs, etc. are analyzed and exposed.

Topics addressed at the event 2019

1- Multimedia Trademarks

They are those represented by the presence of an audiovisual file that contains the combination of image and sound. These trademarks are starting to be taken into account within the European registers, although they are usually registered as services and not as goods. However, they have two problems:

a- Having so many elements involved, often lack the distinctive character required for the trademarks.

b- Many of these brands are usually video games whose central themes often clash with morality and good manners, preventing your registration as such.

2- Packaging and trademarks

Last May, the CJEU issued a new judgment (C-642/16 Junek Europ-Vertrieb of May 17, 2018) related to the interpretation of ¨the principle of exhaustion of trademark¨ in the case of parallel imports and repackaging of products, mainly in medicines and health products. 

In other words, what was analyzed is whether the owner of a trademark has the right to prevent the commercialization of a product that has his trademark, legally marketed in another EU State, when its original packaging has been modified. In the judgment, the CJEU was referred to other judicial decisions in which 5 requirements were established to consider when the exhaustion of the right of the owner of the mark takes place.

These requirements determine that the right of the owner of a mark is exhausted when the variation of the packaging does not affect the origin of the product in relation to the brand or does not cause any harm to consumers. In this case, it was considered that the owner´s right was exhausted and, therefore, the owner had no right to prevent that commercialization.

3- Artificial intelligence

The issue of Artificial intelligence has become the storm in a teacup of the patent area. Not only because it is an important point in the subject of patents, but it is a technology that involves more edges. In itself, the question arises of recognizing computers as a-inventions or b-legal entities under the law. While it is currently held that computers programmed to create objects could not be considered as “inventors”, this does not prevent the rules of the game from changing in the future.

4- Competition law, patents, and the pharmaceutical sector

In recent years, certain “questionable lawfulness” practices have become usual within the patent sector, specifically for generic drug companies, which are intended to extend the protection of these drugs and block the entry of new companies into the market.
Some of these practices aim to register small changes of the main patent before the generic one enters the market (product hopping), the indiscriminate registration of patents in order to protect a product and block competition (defensive patents), increase the protection of a patent with other minimum patents, applications which remains pending to be registered (divisional patent applications), among others.

It is against this panorama in which the European Commission emphasizes the importance of using the “Competition Law” in conjunction with the “Patent Law”.  The purpose is to avoid these covert monopolies within the field of patents. Likewise, it is important to note that while markets such as the United States generally prohibit these practices, some of them are allowed in the EU.  So it is substantial to determine when one is facing an allowed situation and when facing competition action unfair.

5- Online parodies and future of upload filters

The New (and controversial) article 13 of the Copyright Directive establishes a paradigm shift by determining that it will now be the platforms which will have to ensure that the content they host does not involve copyright violations. That is, services such as Facebook, Twitter or Google but also Wikipedia or GitHub will have to adopt measures and use content recognition techniques to block them directly. Therefore, it is expected that in order to avoid sanctions, platforms tend to block more content than they should.

Another controversial issue is online parodies, better known as memes. Although the exception of parody is treated differently in each country, in order to understand when we are within the limits of one it is important to consider 4 basis points:

– Who is the interlocutor.
– The type of expression.
– The context in which it is said.
– What is said.

It is clear that in the face of this scenario, certain difficulties will arise for the platforms when recognizing when they are facing a parody and when they are facing illicit content. On this point, even though the New Directive establishes the exception of mandatory parody in the EU, platforms are not encouraged to apply filters to differentiate parodies of illegal content, which will be a problem in the future.

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.

World’s Five Largest Patent Offices Agree on Joint Task Force for Emerging Technologies and Artificial Intelligence (AI)

By José Santacroce, Partner and Head of Patent Department

IP5 Annual meeting

The heads of the five largest patent offices held their annual meeting on 13 June 2019 in Incheon, Korea.

The five offices, known as the IP5, are:

• Korean Intellectual Property Office (KIPO).
• European Patent Office (EPO).
• Japan Patent Office (JPO).
• China National Intellectual Property Administration (CNIPA)
• United States Patent and Trademark Office (USPTO).

The IP5 together handle around 85 percent of the world’s patent applications.

The meeting was chaired by KIPO Commissioner Park Wonjoo, and was attended by EPO President António Campinos, JPO Commissioner Naoko Munakata, CNIPA Commissioner Shen Changyu, and USPTO Director and Under Secretary of Commerce for Intellectual Property Andrei Iancu. The Director General of the World Intellectual Property Organization, Francis Gurry, attended the meeting as an observer.

“Co-operation with our IP5 partners is a key to building an efficient and effective global IP system by establishing more aligned procedures worldwide,” said EPO President António Campinos.

“IP5 co-operation is a success story. The EPO and its partner offices are now entering a new phase of their co-operation where we should think about further strengthening IP5 co-operation and promoting a more comprehensive IP agenda, in order to better respond to our users’ needs who handle comprehensive IP portfolios with bundles of IP rights,” he said.

The five heads of office welcomed recent progress on IP5 initiatives, such as the classification of emerging technologies, the continuous improvement of Global Dossier services, enhanced work sharing, and the harmonization of patent practices and procedures.

New Emerging Technologies/Artificial Intelligence Task Force

The IP5 heads agreed to launch a New Emerging Technologies/Artificial Intelligence Task Force with a view to responding appropriately to and exploring future joint initiatives related to global technological developments. The five leaders also agreed to improve the IP5 structure to achieve greater efficiency within the IP5 co-operation framework.

Meanwhile, the heads of office endorsed the final results of work on the three sub-projects in the area of patent practice harmonization – unity of invention, citation of prior art and written description/sufficiency of disclosure – which aim to alleviate the burden on applicants and increase work efficiency.

They acknowledged that the tangible outcomes of IP5 patent practice harmonization have brought substantial benefits to users. They also recognized the need to select new harmonization topics, which are in line with the IP5 vision, to be discussed in the future.

Technological transformation

In a separate meeting, the heads of office met with representatives of industry from the five regions to update them on recent developments and to discuss intellectual property issues. These topics include strategic areas such as new emerging technologies, AI, and the future work of the IP5.

The industry representatives expressed their support for the IP5 offices’ joint efforts to better respond to worldwide technological transformation, and reaffirmed their willingness to work with the offices in these endeavours.

The IP5 offices and industry agreed to enhance communication on the importance of IP and the benefits of IP5 projects to a broader audience and step up outreach efforts.

Source: www.epo.org

EPO and INPI Argentina sign first Reinforced Partnership Agreement

By José Santacroce, Partner and Head of Patent Department

EPO and INPI Argentina sign a Memorandum of Understanding (MoU)

The European Patent Office and the National Institute of Industrial Property (INPI) of Argentina are stepping up their cooperation. EPO President Antonio Campino and INPI President Damaso Pardo signed on 2 July 2019 a Memorandum of Understanding (MoU). The purpose is establish a Reinforced Partnership programme between both offices. This comprehensive cooperation agreement is the first of its kind to be set up by the EPO with an IP office in Latin America. The meeting of the Heads of Office took place on the margins of the IP Executive Week in Alicante.

According to Antonio Campinos, thanks to this agreement, the EPO can work more closely with one of the largest economies in Latin America. In addition, the EPO can also strengthen its relations with this dynamic region. Building on EPO long-standing ties with INPI, the agreement will help better meet the needs of companies in Argentina and users around the globe.

According to Damaso Pardo, this agreement aims to render the respective patent systems as efficient, user-friendly and reliable as possible for innovators; a robust patent system is an essential instrument for stimulating innovation, entrepreneurship and economic development.

Reinforced Partnership programme objectives

Through their Reinforced Partnership programme, the EPO and INPI will work together to achieve shared objectives such as ensuring that the patent systems in both regions offer the best possible services to innovating businesses and inventors in an effective manner in order to benefit the economy and society as a whole.

The Offices will also focus on a number of activities aimed at strengthening capacities in search and examination in emerging technologies fields such as the Internet of Things  (IoT) and Industry 4.0, as well as capitalising on EPO work products, tools and standards.

The EPO and INPI have a long-standing history of cooperation. A previous MoU on technical cooperation was signed in Buenos Aires in May 2017, which will be replaced by the most recent MoU on Reinforced Partnership.

Source: www.epo.org

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