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1 September 2013PatentsMarcelo de Oliveira Müller

Best foot forward: developments at the INPI

Although at this point the examination of both patent and trademark rights can take years to reach a conclusion, changes have been occurring, especially with regard to trademarks, and it is with relief mixed with caution that we see the current administration at the Brazilian patent office (INPI) taking several steps towards attempting to improve its services.

The INPI has established task forces aiming at providing faster results and has been adopting practices more in line with international trends, which seems to be a preparation for possibly joining the Madrid Protocol at some point in the future.

We have seen the establishment of internal rules and practices that are geared towards results, an important step towards clearing the large backlog of pending applications, especially those subject to administrative disputes.

One of the first important innovations implemented by the INPI was the creation of a new mediation proceeding, which works for disputes involving all and any IP rights, including trademark disputes, namely trademark oppositions, appeals and administrative nullity actions. This procedure has been developed in conjunction with the World Intellectual Property Organization (WIPO).

The INPI began offering seminars on the subject in July 2012, and a Memorandum of Understanding was signed with WIPO on September 12, 2012. In April 2013, the INPI issued Resolution no. 084/2013, which institutes mediation procedures and Normative Act 23/2013, which provides for trademark mediation regulations.

Parties involved in a trademark dispute before the INPI that are interested in mediation must voluntarily choose this path, and during the mediation period the INPI will suspend the ongoing administrative procedure (pending oppositions, appeals and administrative nullity actions) for a period of 90 days, which can be extended for another identical period if certain conditions are met.

It is relevant to mention that the mediation proceedings will be handled by WIPO whenever at least one of the two parties is not a Brazilian resident. If both parties are residents of Brazil, then the mediation proceeding will be through the INPI.

The INPI is not a party to the mediation proceeding, merely administering the process. In the same way, the INPI’s examiners cannot act as mediators, and the INPI does not provide a mediator, which can be chosen from a list provided by WIPO.

This new option is very recent, and the INPI has announced a programme to incentivise the use of mediation, consisting of refraining from charging official fees for the first 50 cases for which mediation is elected in the period from July 15, 2013 until the end of December 2013.

In April 2013, the INPI held a seminar during which it announced a series of innovations that it intends to put into practice in the near future, and some of the points touched upon are, in fact, already implemented or under clear development.

As a matter of fact, during this seminar the INPI provided a detailed report of what its goals are, and announced, among other improvements, its intention to reduce the trademark examination period to 18 months by January 2014, and to reduce the examination period to nine months by January 2015.

"This resolution makes clear that the inpi is free to adopt any given list of pre-approved goods and services, and not only those forseen in the nice classification."

Moreover, it said that a new internal software system named IPAS will soon come into use, which would bring a series of alterations to the INPI’s current practice, such as the possibility of filing multiple class applications and designating more than one applicant for the same application. It will also bring improvement in web access to briefs that were filed in each application or registration, which will allow examiners to work remotely.

Promised measures

Following these announcements, on May 16, 2013 the INPI published Resolution no. 89/2013. This resolution addresses the implementation of multiple class trademark applications in Brazil, and establishes some internal deadlines for the INPI to put in action some promised measures.

The most relevant internal deadline instituted by the INPI in Resolution no. 89/2013 concerns multiple class trademark applications. The resolution establishes that within a 180-day term counted from the resolution’s publication date, the INPI must implement mechanisms that will allow and regulate the filing and the examination of trademark applications comprising more than one class.

No details regarding this procedure have been divulged in the resolution itself or through any other means so far, but it has been long-expected, and reflects the INPI’s intention to move into line with international standards.

With the end of the 180-day term fast approaching at the time of writing, it remains to be seen how the INPI will deal with this new modality of applications, from filing and prosecution up to registration. We expect that in the coming couple of months the INPI will issue new regulations regarding this matter, but we envisage certain drawbacks until the new rules are finally and properly implemented.

This resolution also brings new features to the electronic trademark filing framework, with another important deadline imposed by the INPI on itself. Resolution no. 89/2013 foresaw that the INPI would have 90 days from the resolution’s publication date to make available the necessary forms that will allow an applicant to file a trademark application via electronic means, choosing any wording that it desires for its specification of products or services, instead of having to abide by any pre-approved listings that exist or will eventually be accepted by the INPI.

Although this 90 day-term has already elapsed, no guidelines have been provided, and Brazilian IP practitioners and applicants are now anxiously awaiting access to the new forms and potential regulations that will be issued for this new type of electronic filing of trademark applications.

It is important to remark that this resolution makes clear that the INPI is free to adopt any given list of pre-approved goods and services, and not only those foreseen in the Nice Classification, and that the examination of those applications filed using a pre-approved specification of products or services may take less time to occur, as the INPI will not have to analyse the application’s specification and its adequacy to the chosen class(es).

On the other hand, applications filed with a tailored specification will still need to have all goods or services analysed, so that the wording used in the specification can be reviewed and approved, possibly generating the need for the INPI to make the specification chosen adequate to the class designated by the applicant, or even to raise office actions demanding clarification.

At the same time, for applications filed using, in the specification of products/services, the specific items foreseen in the Nice Classification (or other pre-approved list of goods and services), the approval of the specification/classification is promised to be immediate.

In addition, Resolution no. 89/2013 made clear that whenever an application is filed without goods/services in the INPI’s pre-approved list(s), the INPI examiners may use their own subjective criteria to create a more appropriate specification of goods or services for better adapting to the classification.

Actually, deciding on the propriety of the placement of the claimed specification, or of some of the goods/service claimed, in the class designated at the time of filing, or even making alterations in the specification so as to better clarify the goods or services, are foreseen as faculties of the INPI in this resolution. This discretionary power to rewrite specifications is to be regarded with caution and practitioners should watch how the INPI deals with it.

Finally, the resolution provides that within 180 days of its publication, the INPI must publish a list of what it considers to be market affinities, which will be used by examiners to analyse the risk of confusion or undue association between similar or identical trademarks covering similar, related or akin goods and services.

This resolution also foresees the creation of special groups within the INPI to study classification issues, aiming at suggesting amendments and additions to the pre-approved listings of products and services, providing orientation to the other sectors of the INPI regarding classification issues and answer consultations.

New software

The latest alteration as far as trademark prosecution is concerned, taking account of public announcements made by the INPI in April, was the adoption, on July 23, 2013, of the IPAS software system, a new internal software system for the electronic management of applications and registrations.

This software, although recently adopted, has increased the interaction between the INPI and the applicants/registrants, bringing innovations such as a more complete web-based database, which contains information such as the petitions filed in each case and official fees paid in each process.

This new system also instituted an entirely new methodology, along with a new set of codes, for the issuance of decisions by the INPI. It also creates formal communications relative to issues that before the implementation of the IPAS were not object of publications by the INPI. Although this new method of communicating decisions did not alter either the means or timing of the INPI’s decisions, which is still on a weekly basis and in the Official Gazette, it brought some relevant changes.

For instance, decisions rendered on petitions that were filed requesting corrections or alterations with regard to some particular item of the application/registration were not published by the INPI until the advent of this new system. This procedural change, although minor, serves to end an uncertainty that always existed with regard to the submission of requests such as restrictions of goods or services, which play an important role when it comes to fulfilling agreements.

All these changes are, in principle, to be regarded as positive, and indicate the INPI’s willingness to become more transparent and more efficient. Nevertheless, it is yet to be determined how expediting examination procedures will affect the quality of the services rendered by the INPI.

In fact, in a country where the IP law provides that substantial examination of applications is to be carried out considering relative and absolute grounds of refusal, it will probably be an extremely difficult task to resolve a backlog of years of examinations in the short period of time desired by the INPI, at least not without a risk of harm to the quality of the examination.

Marcelo de Oliveira Müller is a partner at Luiz Leonardos & Cia. He can be contacted at:  mmuller@llip.com

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