Brazil

WIPO: Madrid Information Notice – Change in the Amounts of the Individual Fee: Brazil

By Moeller IP Team.

As from July 18, 2020, the amounts of the individual fee payable in respect of Brazil will change. Those amounts will be:

• 75 Swiss francs (first part) and 135 Swiss francs (second part) for each class of goods or services, when designating Brazil in an international application or subsequently;
• 193 Swiss francs for each class of goods or services, when renewing an international registration in which Brazil has been designated. Where the payment is received within the period of grace, the fee will be 292 Swiss francs for each class of goods or services.

For further information, please refer to Information Notice No. 47/2020.

Moeller IP will monitor your international TMs in the Brazilian TM Gazette for free. Please do not hesitate to contact us at any time with any doubt or questions you may have at trademarks@moellerip.com

Brazilian PTO and CAS Establish Technical Cooperation Agreement to Strengthen the Fight Against Patent Backlog

By Moeller IP Team.

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.

Source: https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-e-cas-estabelecem-acordo-de-cooperacao-tecnica-para-reforcar-combate-ao-backlog-de-patentes

Typical Brazilian Products and Services are Included in the WIPO Classifier

By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.

Brigadeiro, cheese bread, açaí in the bowl, Minas cheese, Capoeira teaching, and Chorinho show are some 668 descriptions of new products and services typical of Brazil that, as of June 5, 2020, are part of Madrid Goods and Services Manager (MGS), a product and service classifier from the World Intellectual Property Organization (WIPO).

This is a simple and effective milestone for Brazilian Trademark Law and Industrial Property. Through easy access to these data at MGS, we seek to ensure that offices in other countries do not exclusively assign products and services that are so typical of Brazilian history and production as a brand.

In addition, the initiative is based on the fact that most of the laws in the world follow the equivalent to that determined in item VI of article 124 of Law No. 9.279 / 1996 (Industrial Property Law), which prevents the registration of descriptive signs when related to the product or service to be distinguished.

The work was an initiative of employees of the BRPto Trademark Directorate that make up the teams of the Madrid Protocol and the Product and Service Classification Commission (CCPS) in partnership with WIPO.

From around 200 of these descriptions of typical Brazilian items, which were already on the auxiliary lists of products and services prepared by CCPS since 2000, the wording has been improved to provide standardization, clarity, and the best information from the point of view foreign users.

Then, developments and expansions were made, resulting in 668 items, with translation into English. The descriptions came from extensive Commission research from a variety of sources.

Source: https://www.gov.br/inpi/pt-br/central-de-conteudo/ultimas-noticias/produtos_e_servicos_tipicos_do_brasil_entram_no_classificador_da_ompi

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

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).

Source: http://www.inpi.gov.br/noticias/campanha-gaucha-ganha-indicacao-geografica-para-vinhos-e-espumantes/view)

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.

Source: www.inpi.gov.br/noticias/inpi-prorroga-suspensao-de-prazos-e-teletrabalho-temporario-ate-15-de-maio/view

INPI Brazil | On COVID-19 Priority Examination for Pharmaceutical Products and Processes

By Moeller IP.

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/

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

Brazilian Senate approves adhesion to the Madrid Protocol

By Marta Garcia, Patent Technical Advisor

On May 22, 2019, the Brazilian Senate approved the Draft Legislative Decree No. 98/2019, which allows Brazil adhesion to the Madrid Protocol, the International Trademark System. The system is expected to start operating in October 2019 at the National Institute of Industrial Property (INPI).

Created in 1989 and in force since 1996, the Madrid Protocol is an international treaty administered by the World Intellectual Property Organization (WIPO) established to create a centralized system of trademark protection for all the signatory states.

Through the Madrid Protocol, applicants can protect their trademarks in all member countries by filing a single application in one of the member countries. Procedures are uniform and the application can be filed in one of the three official languages – English, French or Spanish. However, the examination of the application follows the national legislation of each country.

The main advantages of the system are: the reduction of filing and management costs, the higher predictability in response time, the simplification of the whole procedure and the permanent monitoring for trademark management in all the countries where the trademark is registered.

Currently, 104 contracting parties are signatory to the Madrid Protocol. In Latin America, only Colombia, Cuba and Mexico are part of the Protocol.

As previously explained in our blog, with Brazil’s upcoming adhesion to the Madrid Protocol, the INPI needs to overcome a series of obstacles for a smooth integration into the Protocol requirements.

Firstly, as a rule of the Protocol, the examination of an application must be carried out within 18 months from the filing date. This was one of the main issues to be solved by the INPI, due to its known backlog problems.

However, as reported in our blog, according to the 2018 Activity Report, the INPI is already complying with this requirement, since the processing time from trademark filing was reduced from 48 months (in applications with opposition) and 24 months (in applications without opposition) in 2017 to 13 and 12 months in 2018, respectively (Figure 1). According to the INPI´s Strategic Plan 2018-2021, which was published in October 2018, the goal is to further reduce the processing time to 8 months in applications with opposition and to 4 months in applications without opposition.

Figure 1: Trademark examination time (in months)

Secondly, the Draft Legislative Decree No. 98/2019 establishes Spanish and English as the possible languages for a trademark application filed through the Madrid System. Taking into account that the INPI’s working language is Portuguese and all applications are filed in this language, the INPI´s operational procedures will have to be changed, the IT systems updated and the staff trained.

Finally, the INPI will have to implement further relevant measures to align with the procedures of the Madrid Protocol, such as:

– the processing of a trademark registration in a multi-class system (e.g., the possibility of requesting the protection of more than one class of product or service in a single application), which is not an option under current INPI practices; and

– the registration under a co-ownership policy (e.g., the possibility of a trademark application/registration being held by more than one owner). Even though the Brazilian system already allows for multiple owners of a single trademark, the INPI has been reluctant to accept and implement this option, for administrative and organizational reasons.

Currently there are public consultations open regarding the implementation of the above measures. The consultation about multi-class registrations will close on June 13, 2019, whereas the one regarding co-ownership will be open until June 20, 2019.

Adhering the Madrid Protocol could boost exports and internationalization of national brands abroad, and make it easier for international companies to operate in Brazil. Moreover, Brazil’s adhesion to the treaty could even prompt other Latin American countries to join soon.

Source: http://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)