The patent backlog for agrichemical inventions

01-04-2014

Otto Licks and Maria Luiza Cotia

Brazil is the largest consumer of agrichemicals in the world, with agrichemical sales there hitting $11 billion last year, according to crop protection news website Agrow, but its patent system still has to be developed if innovative firms aiming for an adequate return on their investment are to receive the appropriate patent protection.

Agrichemical-related inventions in general were always considered patentable in Brazil but some aspects were not under the former IP statute (Law # 5,772/71). In particular, Article 9 (b) of that statute established that substances, matters or products obtained by chemical means or processes were not patentable.

However, Brazil is one of the signatories of the World Trade Organization’s Trade-Related Aspects of IP Rights Agreement (TRIPS), which came into force on January 1, 1995. Therefore, when the current IP statute was enacted in 1996 and came into force on May 14, 1997, it encompassed all the minimum standards of protection set out in the TRIPS agreement, including the rule that patents should be granted for any inventions, whether products or processes, in all fields of technology without discrimination (Article 27.1).

As a result, when the current IP statute (Law # 9,279/96, Patent Statute) came into force in May 1997, (except for Articles 230, 231, 232 and 239, which came into force on the date of the publication of the Patent Statute on May 14, 1996), agrichemical-related inventions covering substances, matters or products obtained by chemical means or processes were considered liable for protection as the Patent Statute allowed patent protection in all fields of technology in accordance with the TRIPS agreement.

Nonetheless, there is a huge backlog at the Brazilian Patent and Trademark Office (INPI). It is now examining patent applications filed more than 10 years ago for agrichemical-related inventions and the number of decisions, on either granted patent or definitively-rejected patent applications, published by the INPI is still low compared to the number of patent applications filed.

For instance, Syngenta, one of the top five agrichemical companies, has filed approximately 1,061 patent applications in Brazil—only 231 have been decided so far. Bayer Cropscience and Monsanto have filed, respectively, around 1,168 and 977 patent applications but only 115 and 247 of their applications have so far been decided.

One example of the delay at the INPI in examining patent applications is the application that covers Bayer’s insecticide Movento (spirotetramat). Bayer expected to record annual sales of around €200 million ($275 million), according to Bayer News 2008, when it was planning to launch the insecticide. But although this important patent application was filed in 1997, it has not been decided so far, even after a long-term examination by the INPI.

In addition to the backlog, applicants for agrichemical-related inventions are faced with the strict position adopted by the INPI when examining patent applications related to the combination of two or more known active agrichemical ingredients. Nowadays, these make up the majority of the patent applications filed in the agrichemical field.

When examining agrichemical-related applications relating to the combination of two or more known active agrichemical ingredients, the position currently adopted by the INPI is that it requires the applicant to demonstrate a synergistic effect between the components. Moreover, such an effect should be shown for any and every combination for which protection is requested, as INPI sees the synergistic effect as unpredictable.

As a result, tests that demonstrate the synergistic effect of compounds of similar chemical structures or that work in the same way are not usually accepted by the INPI, the Colby method being the most commonly accepted test for showing the synergistic effect between active agrichemical ingredients.

Therefore, even though agrichemical-related inventions are considered patentable subject matter in Brazil, the backlog in examining and deciding on patent applications, as well as the strict position adopted by the INPI during the examination of agrichemical-related inventions that involve the combination of two or more known active ingredients, jeopardises innovative firms.

The patent system in the country still has to be developed better, even though Brazil, the largest consumer of agrichemicals in the world, continues to attract innovative firms and remains one of the world’s largest food producers and exporters.

ottoliks.jpgOtto Licks is a partner at Licks Advogados. He can be contacted at: otto.licks@lickslegal.com

Maria Luiza Cotia is a pharmacist and patent attorney at Licks Advogados.  She can be contacted at luiza.cotia@lickslegal.com

 

agrichemical, patents protection, TRIPS, INPI

WIPR