Brazil focus: Light at the end of the backlog tunnel?
The patent backlog at the Brazilian Patent and Trademark Office (INPI) has been a dark cloud hanging over the country for several years, but in early 2016, in partnership with the US Patent and Trademark Office (USPTO), the INPI launched the Patent Prosecution Highway (PPH) pilot programme.
In the pilot programme, an applicant whose patent claim is approved by either the INPI or USPTO can request accelerated prosecution of the corresponding claim in the other office. It had been in the pipeline since May 2010 and is an attempt by INPI to try to reduce its patent backlog. The role of the pilot programme is also to support economic development and seek ways to address IP and innovation.
On March 19, 2015 a statement from Daniel Godinho, secretary of foreign trade, Brazilian Ministry of Development, Industry and Foreign Trade, and Kenneth Hyatt, US acting under-secretary for international trade, was released, declaring their intention to further strengthen commercial ties between Brazil and the US.
“In the field of IP, the INPI and the USPTO … reiterate the commitment to enhance cooperation on training for patent and trademark examiners and sharing good management practices,” the statement read.
Problems to solve
In December 2015, Otto Licks, partner at Licks Attorneys, wrote an article for WIPR in which he showed that Brazilian patent filings had increased from 28,099 in 2010 to 34,050 in 2013, adding that the INPI’s backlog “continues to increase at an alarming rate”.
He said that official data from the Brazilian government “partly provides an answer”.
“Of the 304 listed examiners at the INPI, 87 are not currently examining patent applications. A number of patent examiners are instead taking care of the INPI’s library, acting as user support officers, analysing licensing contracts, handling Patent Cooperation Treaty formalities and teaching at the INPI’s Academy,” he wrote.
Further, “the patent department at the INPI is subdivided into four coordination units and 20 divisions. The heads of each division and unit are patent examiners, but do not examine patent applications”.
However, he argued, the number of patent examiners is “more than enough” to tackle the patent backlog.
This analysis is a stark reminder of what patent owners operating in Brazil face but, with the PPH pilot programme, it is hoped that patentability decisions will be decided more quickly.
"THE TRIAL PERIOD MAY BE EXTENDED IF NECESSARY TO ASSESS THE FEASIBILITY OF THE PROGRAMME. IT MAY ALSO BE TERMINATED IF IT 'EXCEEDS A MANAGEABLE LEVEL' OR FOR ANY OTHER REASON, WITH NOTICE PUBLISHED IF IT IS."
The pilot programme entered into force in November 2015 as a result of a memorandum of understanding signed by the USPTO and INPI on July 30, 2015. Armando Monteiro, the former Brazilian minister of development, industry and foreign trade, and US secretary of commerce Penny Pritzker put pen to paper. The wider aim was to strengthen trade relations between Brazil and the US.
The trial period for the pilot programme started on January 11, 2016 and will end on January 10, 2018, or until each office has accepted 150 US or Brazilian applications. At the moment, the programme is intended only for patent applications in the oil, gas and petrochemical industries that were filed in the last three years or after the initial date of the pilot programme.
The trial period may be extended if necessary to assess the feasibility of the programme. It may also be terminated if it “exceeds a manageable level” or for any other reason, with notice published if it is.
Effects on IP practice
WIPR spoke to a number of Brazilian IP lawyers about their thoughts on the pilot programme since it began in January.
Regarding the industry restrictions put in place, Gabriel Di Blasi, managing partner at Di Blasi, Parente & Associados, says: “The agreement to enter into a PPH between the US and Brazil began on a trial basis, and the decision to limit it to one industry was done for several reasons.
“Among others, it ensures that there are sufficient resources available in Brazil to meet the obligations under the agreement, as this is an important industry for the Brazilian market, and it also makes it easier to review the results of the PPH. But the limitation to one industry was always meant to be a stepping stone.
“The intention is to expand it to other industries once we have the process established and make sure that it is successful,” he adds.
“It’s too early to tell if it’s a success, since this is a small programme and is restricted to only one industry. However, I believe that it is the beginning of an outstanding initiative so that Brazil can be part of the big IP players in the world.”
Di Blasi’s sentiments about the future of the pilot programme are echoed by Ricardo Pinho, partner at Guerra IP. “Apparently, Brazilian applicants are using the system more than US applicants,” Pinho adds.
According to the INPI, 22 applications have been processed at the office under the pilot programme.
Marcela Trigo de Souza, partner at Trench, Rossi e Watanabe Advogados, says that the patent applicants include Sun Coke Technology and Chevron US.
“To date, the programme has shown to be very effective, but due to its current limitations, it has very little impact on the problems faced by the INPI, especially on the backlog, which in turn makes the office one of the worst and slowest in the world,” she adds.
“Some industries, including IT and telecoms, face a waiting list of more than 14 years to have a patent granted in Brazil, which is absolutely not reasonable when compared to other countries.”
Tatiana Campello, partner, and Julia Davet Pazos, junior partner at law firm Demarest Advogados, say that it’s “too soon to determine if the project has worked since, until now, no decisions have been issued by the INPI due to the pilot programme”.
“It will be interesting to see how the agreement between Brazil and the US might be the beginning of participating in additional PPHs, such as that of the IP5."
Letícia Provedel, partner, and Ari Magalhães, consultant at Provedel Advogados, agree with Di Blasi that if the pilot programme works out, “it will get a broader scope”.
“It is definitely the fastest track we have in Brazil for patent applications. From the presentation of documents to the granting of the patent, it takes, on average, 60 days,” Provedel and Magalhães say
Rest of the world
The INPI-USPTO PPH pilot programme is a standalone initiative and is separate from the PPH programme run by the IP5, the five largest IP offices worldwide: the European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), State Intellectual Property Office of China (SIPO) and the USPTO. The IP5 scheme was set up to improve the efficiency of the examination process for patents worldwide; it has produced some impressive figures for patent applications and granted patents.
In December 2014, the IP5 reported an 11% increase in patent filings in its “IP5 Statistics Report 2013”, with 2.1 million patent applications filed at the JPO, EPO, USPTO, KIPO and SIPO. Another IP5 report was published in June this year, called “Next steps of the IP5 PPH”, and it published a table outlining that the pilot programme has been successfully used since its launch.
Further, the IP5 published its “IP5 Statistics Report 2014” and said that together the five IP offices had granted 955,447 patents that year. According to the report, the number of patents granted at SIPO, the USPTO and KIPO increased by 12%, 8% and 2% respectively, while the number of patents granted at the JPO and the EPO decreased by 18% and 3% respectively.
The Brazil-US pilot programme is not officially linked to that of the IP5 and, according to Di Blasi: “It will be interesting to see how the agreement between Brazil and the US might be the beginning of participating in additional PPHs, such as that of the IP5—although then they might have to call it the IP6.”
Di Blasi praises the work of the IP5. “It has certainly streamlined information and expedited processes in the five largest patent-filing jurisdictions, and when you look at the patent statistics that the organisation has released in the last couple of years, it has clearly been a success.”
The consensus from Brazilian patent lawyers is that it is too early to judge the PPH pilot programme’s success. However, the Brazilian patent backlog is still at the forefront of everyone’s minds, and a 14-year wait for industries such as IT and telecoms is arguably hard to swallow for any IP owner. The pilot programme could be important for tackling Brazil’s patent backlog problem, but will it be a success? Only time will tell.
