Sheila Alves: smoothing the path

Facing a 14-year delay in having your patent granted is not an appealing prospect.

In Brazil, this is the reality and it means that Sheila Alves, an intellectual property liaison offer at the British Embassy in Brasilia, may have a tricky task on her hands.

From her base in the capital city, Alves is tasked with helping UK companies to protect their IP in Brazil.

Working either directly with the Brazilian Patent and Trademark Office (INPI), or through other government departments, Alves advises UK companies on the best strategy but also provides links between the INPI and the UK Intellectual Property Office (IPO).

Her job forms part of the IPO’s attaché network, which has officers placed in China, Singapore and India as well as Brazil.

As far as IP is concerned, the threats in China mainly concern counterfeit goods. In India, the worrying issues surrounding generic drugs that face the pharmaceutical industry have been widely reported.

But as yet the task of protecting IP in Brazil has not received as much widespread coverage.

Despite there being problems, Brazil is a huge market with a lot of potential, Alves tells WIPR.

She first turns to “one of the major issues” facing Brazil: a backlog in patent and trademark applications at the INPI.

“One of the major difficulties is that there is a huge backlog of patents at the INPI. In some sectors a patent may take from 12 to 14 years to be granted,” she says.

To provide a contrast, at the IPO it usually takes two to three years to grant a patent. As Alves notes, the IPO also has “special programmes” to speed up an application so that it takes only six months to a year.

Alves says most of the backlog is found in the telecoms sector, where some patents can take “12 to 13 years” to grant.

“It is a staff shortage issue at INPI,” she explains.

At the US Patent and Trademark Office there are nearly 800 examiners but at the INPI there are only around 200.

“The backlog is felt not only by UK companies but also in other jurisdictions,” she says.

"For trademarks the backlog is not as severe but if companies face any opposition proceedings to an application it could take “around seven years” to be completed."

“Although the delay is severe, in the long run it’s better to be protected if your product is copied.

“Even though it takes a long time Brazil has a huge market so there is a lot of potential here,” Alves says.

She talks of Brazil’s population of 200 million, which is made up of “willing consumers” due to a “huge growth in the middle classes”.

“Purchasing power is bigger than it was a few years ago and, despite the fact it takes a long time, the potential is there.”

New staff

There are gradual signs that the problem is improving.

Last year, Brazil’s president Dilma Rousseff pledged to hire hundreds of new examiners at the office.

“If they do keep on hiring new staff and giving the training it’s going to be at least a faster process and will help to solve the biggest problem,” says Alves.

For trademarks the backlog is not as severe but if companies face any opposition proceedings to an application it could take “around seven years” to be completed.

She also notes the recent appointment of Luiz Otávio Pimentel as the new INPI head.

“In Brazil right now there is an economic crisis and the government is trying to cut expenses from the public sector. We will need to see what the new president’s priorities are.”

Alves adds that, at INPI’s own request, the IPO has given the Brazilian agency’s examiners technical training in the fields of nanotechnology and biotechnology.

“Later this year some INPI workers will travel to the IPO to see how it works and functions,” she adds.

In Alves’s role she also works closely with the Ministry of Development, Industry and Foreign Trade, the department of the Brazilian government responsible for the INPI.

“We cooperate in other ways, for example by bringing British expertise to Brazil to give lectures.”

Alves also works in the area of geographical indications (GIs).

GIs, which can be vital for food and drink companies, are used to show that a product comes from a specific territory or has a quality available only to products from a specific region.

According to the World Trade Organization this can take any form and the product does not have to have a geographical name.

But as Alves explains, Brazilian legislation differs in that a GI must refer to a geographical location.

This was recently emphasised following a problematic period in 2012 during which Alves tried to help Scotch whisky obtain GI status in Brazil.

“We held meetings with stakeholders, the IPO and the INPI. Officials then agreed that Brazilian law was inflexible and it would be a good idea to bring it into line with international law,” Alves said.

“After several follow-up meetings, INPI announced that they would make the modifications to the law. These are now on their way to the presidential cabinet for approval.”

A unique system

Another quirk in Brazilian law can be found in the country’s pharma sector which, Alves says, can contribute to a delay in getting patent approval for drugs.

Under Brazilian law the granting of patents for pharma products or processes depends on prior consent by the National Health Surveillance Agency (ANVISA).

An applicant has to deposit a patent application with the INPI, but before the INPI even assesses the application it is sent to ANVISA, whose job it is to decide if the product is safe for the Brazilian market.

If it is approved by ANVISA it then undergoes another examination, this time for patentability, at the INPI.

“It’s a very complex issue,” says Alves. “ANVISA is not responsible for checking patentability but in the end it is the body that says which companies are going to get patent protection and which are not.”

The agency typically takes about three to six months to review an application.

“This is a major factor contributing to the patent backlog in Brazil. The patent analysis process in the past would happen entirely at INPI and then it was sent to ANVISA just to analyse the safety aspects, which was fast and transparent.

“Nowadays, INPI receives the application, provides the protocol number and forwards it to ANVISA for analysis. Because this takes around six months, it is a new delay added to the timeframe INPI takes to grant the patent.

“I believe this is something that occurs only in Brazil,” says Alves.

It’s clear that the INPI’s new president will have plenty of difficulties to sort out.

But with the potential to market a product to a growing population and a booming middle class, and with signs of change already on the horizon, UK companies may yet find investing in Brazil to be ultimately positive.