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19 September 2019PatentsSarah Morgan

Judge rejects injunction against Brazil’s patent backlog plan

A federal judge in Brazil has refused to grant an injunction to suspend the Brazilian Patent and Trademark Office’s (INPI’s) new patent backlog plan.

At the end of July, staff associations at INPI and a Rio de Janeiro-based labour union had filed a writ of mandamus requesting a preliminary injunction to suspend the plan which had been announced earlier that month.

In early July, Brazil announced two measures aimed at reducing the bureaucracy, costs and duration of trademark and patent processes.

The first measure, Brazil’s accession to the Madrid System, has proved less controversial than the second—the patent backlog plan—which aims to reduce the number of backlog requests by 80% by 2021 and to reduce the average term of the patent grant to approximately two years from the request for examination.

In response to the plan, INPI’s staff association AFINPI, labour union SINDISEP-RJ and the association of IP researchers ANPESPI filed their writ.

Bruna Lins, founding partner of HaHallem Advogados, explained that the associations claimed that Brazilian law requires examiners to perform a search and issue a report about the grant or rejection of the patent.

According to Lins, the plaintiffs argued that “suppressing this obligation, which is an important public function, is against the principle of legality, as public agents have to do what is mandated by the law".

However, Federal Judge Marcia Maria Nunes de Barros of the 13th Federal Court of Rio de Janeiro rejected the request, in a decision published on September 11.

According to a press release, issued by INPI on Friday, September 13, de Barros dismissed the associations’ allegations that the plan would be “violating the principles of legality, impersonality, efficiency and morality”,' as well as violating the legal situation agreed with the workers regarding remuneration for performance.

Under the backlog plan, INPI will incorporate prior art searches conducted abroad into the examination of the patent applications in Brazil.

The IP office will issue a requirement for the applicant to express their opinion on the cited documents and, if necessary, to make adjustments to the patent application. Following a response, an INPI examiner will then assess whether or not the patent should be granted.

The office carried out a similar pilot project in 2018, and noted that 80% of the patent applications queued have already been evaluated in another country.

INPI estimates it will be able to take less than 24 months to examine new patent applications after reducing the backlog by 80%.

At the time of the announcement, INPI said that the plan doesn’t require legislative changes or additional costs for the office.

Lins added that the decision to deny the injunction request was based on a series of arguments, including that the backlog problem, which is evident in many IP offices, is aggravated in Brazil because the law ensures that the term of a patent can't be less than ten years from its grant.

In her decision, de Barros said that even though the metrics to calculate examiners' bonuses have been modified, she did not foresee that the new calculation method is incompatible with the complexity of the cases.

De Barros added: “It is not for the court, at least for the moment, to determine if this is the most appropriate response to increased productivity in the patent application analysis service in the face of a range of possibilities and possible public policies for the issue.

The judge found no danger of damage, since there was no concrete information on a reduction in remuneration for patent examiners.

In denying the request, de Barros said that the injunction would halt the effects of INPI’s administrative acts which, until proven otherwise, “are assumed to be valid”.

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