Early warning: filing patents in Brazil
Like many other countries, Brazil has its peculiarities in the field of industrial property. A lack of knowledge of these particularities can result in involuntary restrictions in the scope of the intended protection, and it is important to be aware of some of the processes currently practised by the Brazilian patent and trademark office (INPI).
If you wish to file a patent application in Brazil, it is advisable to be aware of the existence of a backlog of approximately 170,000 applications. It is equally important to know that there are also methods to shorten the processing time of an application at the INPI.
Some patent applications in Brazil can have their progress speeded up if they deal with ‘green’ technology or pharmaceutical products for the treatment of certain diseases that are considered strategic within the ambit of the Brazilian Healthcare Program (SUS). Furthermore, utility models and applications whose subject matter is being infringed can also be prosecuted more quickly.
The programme of green patents, in addition to expediting the prosecution of patent applications related to the environment, also has the objective of contributing to solving problems that arise from global climate change. The programme will be kept until April 16, 2014. All patent applications that have not been examined yet can participate in this programme, including applications filed by residents or non-residents (via the Paris Convention).
Priority examination in the case of patents considered to be strategic within the ambit of the SUS can be requested by the Ministry of Health, at the initiative of the applicant or by other interested parties.
Another form of prioritisation is established by Resolution PR No 14/2013. This resolution establishes that utility models will be the first to be examined.
Resolution No 68/2013 provides that applicants who are 60 years old or over, who are faced with their patented technology being reproduced by third parties without authorisation, or who need the patent in order to obtain financial funding from development agencies or from official national credit institutions, can request prioritisation of the examination.
“PRIORITY EXAMINATION IN THE CASE OF PATENTS CONSIDERED TO BE STRATEGIC WITHIN THE AMBIT OF THE SUS CAN BE REQUESTED BY THE MINISTRY OF HEALTH.”
These procedures against the backlog are only temporarily effective, because they deal with only one part of it. However, it appears that a solution has finally arrived after President Dilma Rousseff sanctioned Law 12823, dated June 5, 2013, which created, among other positions, 475 new jobs in the INPI. A civil service examination is intended next year to fill the vacancies.
As to the prosecution of an application, it is important to know that the INPI is reluctant to accept amendments made after examination is requested. Article 32 deals with the possibility of amending an application before examination is requested, which can be presented up to 36 months from the filing date.
The current understanding of the INPI with respect to Article 32 of Law 9279/96 is restrictive and Resolution 93/13 ratified its interpretation by establishing that amendments after the request for examination are allowed if intended to narrow the scope of protection or to correct errors of translation and/or typing, but never to broaden it, even if based on the specification.
This situation is shown to be even more problematic if the examination is requested by a third party, which prevents the applicant better defining its claims.
As to the possibility of filing divisional applications, it is legally allowed up to the end of the examination. However, the INPI will not accept divisional applications that include claims broader than those presented after the examination of the main application. Changes in the categories of claims are also not accepted.
The date considered as the end of the examination by the INPI is that of the conclusive report of the examiner with respect to patentability, or the 30th day prior to the publication of the grant, rejection or definitive shelving, whichever occurs last. The filing of divisional applications after the rejection of the application or grant is not allowed.
An alternative to gain more time (approximately two years) for amending a case would be not to request examination and to allow it to be shelved for future restoration. Restoration can be made within 60 days of the publication of the shelving in the Industrial Property Gazette by payment of a specific official fee.
Despite the obstacles indicated above, Brazil can be seen as a country that is doing its best for the evolution of the protection of IP. The directors of the INPI are aware of its failings and are developing means to resolve the most important matters. However, its current obstacles with respect to the backlog will be completely overcome only after the arrival of the new examiners.
Regarding the lack of flexibility to amend an application to seek the scope of ideal protection, it can be rendered less difficult with the prior knowledge of the INPI’s position.
Andre Alvarez is a partner at Daniel Advogados. He can be contacted at: andre.alvarez@daniel.adv.br
