Ten Years On

The awareness of intellectual property that swept through the world with the creation of the WTO and the signing of the TRIPS agreement at the beginning of 1995 did not pass unfelt in Brazil. If the present IP law in Brazil only came into force in 1997, having passed through Congress in 1996, its origin lies in the final years of the eighties.

At that time, chemical products were not patentable in Brazil. Today, there is certainly not a single person in a city like Rio de Janeiro that is not aware of the fact that buying a counterfeited CD or investing in a look-alike ladies’ handbag is a crime against at least the rights of some legitimate copyright owner, and maybe even feel a spasm of guilt. And the Brazilian population knows that there is patent protection, particularly in the pharmaceutical field. In any case, the awareness is there and ten years after the present IP law was passed it seems that it has come to stay.

The patent provisions of the Brazilian legislation have their origin in the WIPO Patent Harmonisation Treaty that was never adopted but which provoked the modernisation of the patent law in a number of regions, and it was more from the draft treaty, abandoned in 1991, than on the terms of the TRIPS agreement that Brazil modelled the bill that, several years later, became IP Law N ° 9279/96. The new law came as a message of promise to those who defend intellectual property and finally Brazil, a founding member of the Paris Convention in 1883 and of the Patent Cooperation Treaty in 1970, was blessed with a modern industrial property legislation.

Since the new law was passed on May 14, 1996 but only became fully effective a year later, the immediate result was the implementation of the transitory provisions that permitted the filing of "pipeline" applications designed to ensure the immediate grant of Brazilian patents for the same term as corresponding patents still in force abroad which claimed previously unpatentable subject matter not yet worked in Brazil. Such inventions would otherwise only become patentable in Brazil a year later upon entry into full force of the new law, provided that they were still to meet the basic requirements of novelty and inventive activity. Such subject matter included all chemical products as well as pharmaceutical and foodstuff products and processes. A heavy filing fee was imposed. Although the interpretation and application of the pipeline provisions led to a considerable number of cases being questioned in the courts, it is also a fact that they resulted in the grant of a number of patents, mostly in the pharmaceutical field, for which applications had not previously been filed in Brazil due to the prohibitions of the previous legislation.

As from May 15, 1997, however, the provisions of the new law came fully into force and with them the number of patent filings in Brazil increased in the region of 25%, not only on account of the removal of most of the more restrictive patentability prohibitions, but also because of the increased credibility in the policy of the Brazilian government which had not only adhered to the TRIPS agreement but also passed a modern IP legislation. This was accompanied by an increase in foreign investment in Brazil, once more primarily in the pharmaceutical area.

The new law also included important provisions that include a one year grace period for patent filings, a specific recognition of the fact that he who contributes to an infringing act is technically also an infringer and a broad definition of equivalence in the interpretation of patent claims for infringement purposes.

One important change brought about by the new law was the extinction of industrial design and industrial model patents which previously were granted for a fixed term of 10 years after a full examination identical to that applied to patents of invention and utility model patents, and the introduction of design protection by means of industrial design registrations. Such registrations are granted almost immediately on filing and have a term that can be extended up to 25 years from the date of registration which is the same as that of filing. Industrial design registrations, which are also benefited by a grace period (of 180 days), may, on request, be examined as to novelty and originality after registration. Such examination is also rapid and an applicant can expect to have his design both registered and examined within about one year from filing.

The owner of an examined design registration facing a clear copy has a strong weapon to take to the courts with a real possibility of obtaining a very rapid preliminary cease and desist injunction pending final first instance decision.

The last ten years under the auspices of the "new" industrial property law has seen a noted increase in patent related court actions. Many of such actions have been TRIPS related or concerned pipeline patents. Many have been provoked by the growth in the pharmaceutical generics industry throughout the world. And many result from the fact that an improved IP legislation brought more investment to the country. Such actions have largely been with a view to ensure the obtainment of owner’s rights, seeking interpretations from the courts of rights guaranteed by TRIPS and/or by the national IP law. However, there has also been an increase in actions involving patent and design enforcement and it is perhaps here that one should note the awareness mentioned at the beginning of this comment. In particular, there has been a number of interesting interlocutory decisions involving patents in the state courts which have granted preliminary injunctions, both in favour of the patentee and of the alleged infringer. Where a strong prima facie case of infringement has been established, interlocutory cease and desist orders have been given, relatively heavy fines being applied should they be disrespected. On the other hand, where an alleged infringer has a strong prima facie argument of nullity of the patent or design registration, on requesting nullity in the federal courts he has been able to obtain an interlocutory suspension of the patent or design rights (at least with regard to him), pending decision in the first instance.

Indeed, ten years on from the passing of the present Brazilian Industrial Property Law, there have been many developments and, most important, public awareness of patent rights is finally becoming a fact.