An interview with Jorge Ávila

In 1989, Brazil directly elected its first president. Although a degree of economic difficulty followed—resulting in the suspension of foreign debt payments—Brazil has slowly prospered. It has gone on to develop strong international ties, exploit an abundance of natural resources and position itself as a promoter of intellectual property.

In 1995, Brazil joined the World Trade Organization and, in doing so, needed to become TRIPS compliant. Two years later, Brazil approved a new IP law that met the minimum requirements of the TRIPS agreement.

It is the job of Brazil’s National Institute of Industrial Property (INPI) to grant patents, trademarks and industrial designs as a means of protecting IP rights at a national level, for the benefit of both the office’s national and international customers.

Jorge Ávila has been president of INPI since 2006, although he originally joined the office as vice president in 2004. His time as president is split between gathering information and knowledge, building an understanding of the internal workings of the office as well as national and international IP environments, and structuring and leading decision-making processes within INPI.

“I try to move or to influence towards the construction of an integrated IP system that is orientated to promote innovation and, therefore, development,” says Ávila.

“Inside the office, this orientation links INPI’s daily role to the promotion of efficiency and an increasing awareness of the connections of each aspect of its activities, to the more general objective of strengthening the economy and promoting development. These orientations help to build a commitment to results, which in turn is essential for quality and productivity."

Bird’s-eye view

As one of the BRIC countries—a term coined by Goldman Sachs to describe the political and financial potential of Brazil, Russia, India and China—Brazil seems to be in a good position to see and understand the difficulties facing intellectual property. Ávila believes that patent examination backlogs are a problem worldwide. He suggests that it is a problem that has multiple solutions.

“INPI has developed a formal training procedure for examiners and established a system for evaluating the quality of examination procedures and results.”

He says: “Worldwide, it takes a lot of time to process a patent. Maybe six, maybe seven years, sometimes more. The longest part of this time is taken up by patent applications waiting in examination lines. This is present in all the patent offices that undertake a substantive examination of patents. Unfortunately, INPI is not an exception. There is a globally recognised need to change this, formally imprinted in the priorities of the World Intellectual Property Organization (WIPO).”

Inside INPI, an essential tactic is to improve the quantity of patent examiners and the quality of the examination system. Ávila says that the number of patent examiners has jumped from 100 to more than 300. Also, INPI has developed a formal training procedure for examiners and established a system for evaluating the quality of examination procedures and results.

However, these internal improvements alone will not solve the backlog problem, according to Ávila. He says: “Expanding examination capacity is part of the solution, and we are doing the best we can. The rest of the solution relies on international collaboration, which besides helping to solve the backlogs can be very effective as a means of avoiding the damage bad patents can impose on international trade.”

Examination delays, the inevitable backlog and the quality of the patents granted are inexorably linked. The effects that delays and backlogs can have on patent quality are of an added and altogether deeper concern for Ávila.

He says: “We are strongly concerned about quality. There has been, for very long time, a strong concern about the damage bad patents can do to developing economies such as ours. Our current challenge is to build capacity in emerging technology fields, so as to remain able to undertake high-quality examination in all cases.”

He adds: “Backlog issues also relate to quality, as pressure to solve them is quickly becoming more and more unavoidable. We cannot permit such a pressure to undermine quality.”

Quality-oriented collaboration and enhancing internal work capacity can alleviate the effects that this link has on the quality of patents, according to Ávila. He adds: “There is no other way. We are acting on these two fronts.”

Ávila says that the impact of long backlogs can also be remedied by issuing a preliminary decision that informs the user of the likelihood of a patent being granted.

Homeward bound

At home, Brazil faces some challenges. Granting patents in the lucrative pharmaceutical industry is complicated by the role of the Brazilian Food and Drugs Administration (Anvisa). An amendment to the Brazilian Patent Statute in 1999 gave INPI jurisdiction over pharmaceutical patents, but it came with a catch—granting would be subject to Anvisa approval.

INPI and Anvisa have disagreed over the meaning of the article, with the latter believing that the granting of patents for pharmaceutical products and processes depends on the prior consent of Anvisa, so it considers whether these products meet the requirements of patentability—novelty, inventive activity and industrial application.

Ávila says: “Granting IP rights is an exclusive role of INPI. Third parties can contribute to the examination of patents, sending documents, comments and oppositions. Anvisa has a role in the concession of patents, exclusively in the pharmaceutical field. We have been intensively discussing the nature of Anvisa’s role, which is now much better understood and more closely related to its own strategic mission in Brazil.”

He adds: “It is being resolved. Anvisa will concentrate on its issues more and more, which are tremendously complex and relevant, and INPI will concentrate on what legally is its unavoidable responsibility.”

“The key challenge is to build an IP system that can deliver timely, high-quality results. Patent examination is a very complex task, which is necessarily international in nature."

Funding itself does not pose a problem for INPI. “There is a strong link between the budget we obtain from the government and the funds that we raise for the government from INPI service fees,” says Ávila. “As we still have an important issue with the backlog of patent applications, there is still an opportunity to leverage our fund-raising as we speed up examination procedures. In other words, it is, by now, selfsustainable, and we have not experienced important budgetary problems.” The process that INPI uses to obtain its funding is problematic. Currently, the agency must negotiate with the Brazilian government to secure its resources on an annual basis.

Such a process seems to negatively affect INPI. He says: “Of course, it would be even better if the process [of negotiating with the government] was less bureaucratic, but this is an administrative problem that is relatively easy to address.”

Nationally, Ávila spends a lot time talking to people who represent industries, inventors and policy-makers. “I try to deepen their comprehension of the structuring role that IP rights can play in innovation contexts,” he says. “This may be understood as an effort to adequately position IP policies within the general development of policy framework.”

Trademarks have enjoyed particular attention from INPI during Ávila’s presidency. The number of trademark examiners at the agency has more than doubled, the backlog of trademark applications has been reduced to an acceptable level and INPI has prepared to join the Madrid Protocol, he says.

He adds: “The main challenge now is to develop efficient web-based search machines, especially for figurative and mixed trademarks. Another important task is to reduce the variability of the decision-making process, to improve transparency and strengthen the reliability of INPI’s trademark decisions. We are ready to participate in the Madrid Protocol, and we expect it to happen in the very near future.”

Jump abroad

INPI, as a developing office itself, is aware of the necessity to learn from larger and more experienced IP offices. This awareness drives Ávila to learn as much as he can about the IP world at large.

He says: “I look for the technical support that we need to develop the office and its roles, and I strongly engage in promoting collaboration among the various national offices. We try to position INPI as an institution that is able to understand the IP-related needs of the developing world—newcomers to the global game of IP-based open innovation.”

Ávila says: “The key challenge is to build an IP system that can deliver timely, high-quality results. Patent examination is a very complex task, which is necessarily international in nature. Not many offices around the world are effectively able to examine patents in all technology fields, and I believe that, in the future, a more co-operative system will be organised worldwide, which will be designed to deal more adequately with this topic.”

Brazil and INPI are aiming to meet this challenge. “We want to position our office as one of the key participants in such a transnational examination network,” says Ávila. “We will make the office able to contribute to the solution of the patent examination challenge both regionally and globally.”

Perfecting the patent examination report so that it can become an educational tool may help IP offices to bridge the gap in their varying levels of experience in different technological fields. “We are concentrated on building a system under which all countries, particularly developing countries, will be able to decide on patent rights based on excellent examination reports,” says Ávila.

He adds: “That is not yet the case, but several reforms in the organisation of the Patent Cooperation Treaty may lead to that result. Particularly, the improvement of the reports provided by international searching and preliminary examining authorities to national offices can make a big difference, and we are working together with WIPO and international bodies to implement the changes necessary to do so.

"In short, we have been working to improve the international system and to strengthen the national office so that it can play a strategic role.”

It would seem that Brazil’s IP system is not yet complete. INPI supports a new law approved by the country’s congress that will allow the workflow of patents to be reorganised. “It will not totally solve the backlog of patents, of course,” says Ávila. “But it will be a very perceivable advance in that direction.”

Such advances are necessary to improve Brazil’s relationship with the pharmaceutical industry, or to turn INPI into a recognised international player. As INPI’s longest-serving president, Ávila seems to be aware of the successes and failures of his office. If he continues to seek international collaboration from other IP offices and to listen to the customers of his office, then he could well see INPI thrive.