The path to the future: reform in Brazil
Brazil’s economy continues to grow quickly, and its intellectual property system needs to keep pace. Rana Gosain explains.
Brazil is an emerging economy that has attracted substantial foreign investment recently. Its economy is doing well and Brazil has managed to survive the global financial turmoil that struck many countries in 2009. Many multinational companies now rate Brazil as the fourth most important market for investments.
The current IP law is fairly good and is basically TRIPS-compliant. However, the National Institute of Industrial Property (INPI) is sluggish and has been, to some extent, inefficient for many years. In the second semester of 2011 the INPI disclosed an ambitious plan to improve its IP system over the next four years.
The plan includes cutting down on the present backlog of patent applications pending substantive examination. In doing so, the INPI hopes to render a decision on a patent application within four to five years, as of 2015.
The accumulated backlog stands at approximately 163,000 patent cases. The INPI speculates that 57,000 of these cases might not be examined, as statistics have shown that applicants end up abandoning some cases that may not be commercially important.
This year, the INPI intends to adopt electronic patent filing which should lead to a cheaper official filing fee. With the advent of electronic patent filing and prosecution, it is expected that the process will become more expeditious. The INPI is currently implementing an electronic filing and prosecution system.
“THE INPI REFORM INCLUDES A PROGRESSIVE INCREASE IN THE NUMBER OF PATENT EXAMINERS, TO COPE WITH THE BACKLOG AND THE EXPECTED INCREASE OF PATENT FILINGS.”
The INPI reform includes a progressive increase in the number of patent examiners, to cope with the backlog and the expected increase of patent filings. Currently, there are 280 patent examiners; the plan is to have at least 850 examiners by 2015.
As the INPI is a federal entity, candidates must sit for a compulsory examination to qualify as an examiner. Once candidates are selected they will be trained by senior colleagues. Brazilian examiners are required to have Master’s degree to qualify.
The reform of the INPI further includes harmonising practice with that of leading legislations. To this end, the INPI intends to provide distinct proceedings for invention patents and utility model applications. The adopted measure envisages quicker prosecution proceedings for utility model applications, given the fact that utility models involve a lesser degree of inventive step.
Changes are also expected with respect to priority examination. Currently the sole ground for requesting expedited examination is infringement. The INPI may broaden the grounds for obtaining expedited examination. At this stage, it has not disclosed what other grounds are being considered.
The adoption of a Patent Prosecution Highway (PPH) programme is a burning issue, but it is not currently available. The INPI wishes to consider adopting the practice and it would appear the Japanese model is under consideration by INPI.
One other important INPI initiative is to establish IP cooperation with other South American IP offices and thereby form a Latin American IP block. It has been speculated that the INPI could be entrusted with the role of the Central Patent Office.
To cope with its increasing workload, the INPI will move to new premises in March 2012. The new building will accommodate the INPI’s entire staff and will off er state-of-the-art facilities to enhance productivity. In addition, there is a plan to review and vote on pending draft bills of interest that aim to improve IP law and practice.
The INPI’s current lengthy delay in granting patents has created a growing dissatisfaction on the part of patent fi lers and this handicap has given rise to a lack of credibility from an investor’s perspective. It would appear that the proposed reform is timely, given Brazil’s importance to the market. If companies are to invest in Brazil, it stands to reason that the IP system should be an efficient one.
Finally, some signifi cant changes are expected in pharmaceuticals at the INPI. The two-tier examination conducted by the examiners and ultimately by ANVISA (the national Food and Drug Agency) examiners since 2001 has been subjected to new rules. In practice, ANVISA’s mandatory review continues, but with limitations. This is a result of the Federal Attorney General’s final opinion after being consulted on ANVISA’s competence to examine pharma patent applications.
The Attorney General’s findings delimit the responsibilities of INPI and ANVISA. It is our understanding that ANVISA examiners should not interfere with patentability issues and with the INPI examiner’s decision.
Pharma issues such as the patentability of follow-on pharmaceuticals, for example the expansion of patent protection for new polymorphs, second and subsequent use drugs, selection patents and Markush-type claims have been endorsed by INPI examiners.
However, the multi-department Intellectual Property Working Group (GIPI) created by presidential decree in 2001 to tailor public policies on IP rights, has expressed views to the contrary.
Moreover, essential provisions in the law on patent linkage and on data exclusivity periods for human pharmaceuticals are still lacking. It remains to be seen whether the reform will address this issue.
