Brazil focus: increasing its allure

Known for its diverse wildlife, beautiful beaches, tropical rainforests and much more, Brazil has long been an attractive destination for tourists and explorers.

And it’s been a busy time for the Brazilian Patent and Trademark Office (INPI) as it boosts transparency, harmonisation and the attractiveness of IP in the country.

“Brazil is continuously attempting to bring IP policy in line with the best international practices, which in turn affords IP rights owners a greater deal of clarity in terms of expectations,” explains Gabriel Di Blasi, managing partner of Di Blasi, Parente & Associados.

Di Blasi believes that the country is trying to improve its appeal as the leading economy in the Latin America region.

IP plays a big part in that, he says, adding that the office is undertaking actions to improve its efficiency and reduce bureaucratic barriers for those inside and outside the country.

“The easier and more reliable it becomes for companies to protect their IP in Brazil, the more investment the country will receive. It’s a win-win for the country,” says Di Blasi.

On the highway

As part of its bid for harmonisation, the INPI has commenced numerous activities, including the introduction of patent prosecution highways (PPHs).

In July this year, a PPH pilot programme between Argentina, Brazil, Chile, Colombia, Costa Rica, Ecuador, Paraguay, Peru and Uruguay became effective. The group of countries, known as PROSUR, will continue the pilot until July 31, 2018.

Under the PPH, inventors can request an expedited analysis of invention and utility patents filed under the Paris Convention or the Patent Cooperation Treaty.

According to Di Blasi, the PPH is “a huge step towards harmonising IP rights in Latin America”, contributing to a minimum standard of IP protection across the countries.

But the INPI shouldn’t stop there, he says, adding that many other initiatives could be taken to harmonise IP rights in Latin America on a broader perspective.

He suggests that PROSUR could harmonise the examination and search procedures for granting IP rights in the group, as the requirements for some IP rights, such as industrial designs, tend to be different between the participating countries.

“Nevertheless, experts in the field all agree that the PPH programme is already a victory to be celebrated,” he says.

That’s not the only PPH—Japan has also begun a PPH pilot with the country.

In March this year, the INPI’s president and the president of the Japan Patent Office signed the project, which will extend over two years.

A maximum of 200 patent applications will be accepted through the pilot, explains Pedro Bhering, partner at Bhering Advogados.

“In the pilot PPH, INPI will accept patent applications related only to information technology—a dynamic area which requires speedy analysis,” he says, adding that Japan will accept non-PPH patent applications in all fields.

Brazil already has a PPH pilot with the US, beginning in January 2016 and lasting for two years (or until the programme has received 150 patent applications).

Up to July this year, there have been requests to include 50 applications.

On the international stage, Brazil’s National Congress approved the Apostille Convention (on abolishing the requirement of legalisation for foreign public documents) in July 2015.

Last August the convention entered into force, focusing on facilitating the use of public documents from other countries which are signatories to the convention.

Until then, to legalise a public document, diplomatic or consular approval had to be obtained.

Now, an apostille unifies in one document all the information required to validate a public document issued in any of the convention’s member countries.

“Adopting the convention is an important step for Brazil in view of eradicating delays related to the validation of foreign documents,” says Bhering, adding that it also strengthens the country’s international credibility.

Ending an impasse

Perhaps one of the most important patent developments to take place in the country over the past two years is the ending of a stand-off between the INPI and the Brazilian Health Regulatory Agency (ANVISA).

After years of deadlock the offices reached an understanding, with reforms to streamline the analysis of pharmaceutical patents coming into force in June this year.

The INPI and ANVISA signed an agreement clarifying the role of each institution in granting patents for pharmaceutical products and processes.

The impasse began when a statutory provision allowed ANVISA to participate in the processes for the granting of pharmaceutical patents, the so-called “prior consent”, after patent examination by the INPI, explains Bhering.

But the inclusion of an additional federal entity caused delay to the examination process and, according to Bhering, the situation got worse in 2009 when the Office of the General Counsel for the Federal Government published an opinion limiting the acting powers of ANVISA.

The opinion determined that ANVISA was to be limited to the evaluation of the safety and efficacy of medicinal products claimed in a patent application.

“In 2012, the flow of examination was reversed in the sense that all processes in the pharmaceutical area would be first analysed by ANVISA, and then analysed by the INPI. This measure, despite being put into practice, did not generate effective results in the granting
of patents,” he adds.

Now, under the new agreement, ANVISA will only analyse a patent’s impact on public health, while the INPI will analyse patentability criteria (novelty, inventive activity and industrial application).

According to the INPI, there are around 23,000 pending applications in the pharmaceutical area, while the total backlog of patents was 243,820 last year.

For Di Blasi, the end of the double patentability analysis should result in a fall in lawsuits that aim to challenge INPI decisions to not grant patent rights.

Green to the fore

So-called “green” technology has also taken a place on centre stage. After four years of running a pilot programme, the INPI decided to make priority examination of green technology a permanent service and in December 2016 it published Resolution number 175/16, which regulates the procedure.

It represents “a huge victory” for Brazil, says Di Blasi, as it demonstrates the country’s commitment to sustainable development.

He states: “Its implementation as a permanent programme was expected not only due to a confirmation of this green policy but also due to the great response of the green tech community.”

Another resolution is aimed at maintaining transparency in the examination of patents.

Resolution number 158/2016, also published in December last year, brought in new guidelines for the examination of patent applications involving inventions implemented by computer programs.

It’s expected that, with the publication of the resolution, the technical examinations made by the office will become “more agile and easier”. This means less scrutiny in relation to the protection or not of an invention when it involves a computer program.

Although it’s not possible to say whether the resolution has resulted in an increase in the number of patent filings, Di Blasi expects them to increase exponentially.

“This plays a major role in amplifying legal certainty for companies, as they have a better understanding of what to expect when determining whether their applications related to computer programs are worth protecting in Brazil,” says Di Blasi.

What’s next on the horizon?

The INPI still has work to do—with the main focus being the reduction of the application backlog.

“By way of comparison, the US Patent and Trademark Office takes on average 2.2 years to issue a decision regarding a patent application, while INPI takes about 10.2 years to issue the same decision,” says Di Blasi.

However, he adds, the productivity of the INPI has improved in recent years.

In addition, the INPI, together with the Brazilian Ministry of Industry, Foreign Trade and Services, opened a public consultation on July 31, 2017 focusing on a new proposal for a simplified procedure for the granting of patent applications.

The idea behind the procedure is to guarantee transparency, along with aligning measures to fight the backlog with society’s demands, says Bhering.

Patents that have been filed before the new proposal’s publication will be granted within 90 days, as long they fulfil certain requirements.

Bhering adds: “Patent applications involving pharmaceutical products and processes are excluded from this simplified procedure.”

Interested parties had until August 21, 2017 to send in their suggestions.

If this solution is implemented, it will become part of a number of actions which include the modernisation of the technological infrastructure of the INPI, says Di Blasi.

What more can be done? Di Blasi has some suggestions.

The office’s efficiency would be greatly improved if it hired more examiners to analyse applications in general, he says. But it’s unlikely to take place in the near future, given the time it takes to hire and train the examiners.

“Short of hiring the required examiners, the office can and is taking additional action to reduce its bureaucracy,” adds Di Blasi.

He explains that several new measures point to an analysis focused on formal aspects of applications, without such strict, substantial analysis, as well as the implementation of some fast-track procedures to reduce the patent backlog.

Overall, Brazil has taken some major steps over the past two years in a bid to encourage investment in the country, boost transparency and diminish the patent backlog, but there is clearly still more to do.