The Enforcement of Patent Rights in Brazil

The Enforcement of Patent Rights in Brazil

A. Brief Outline of The System of Patents and Civil Procedure

I. Patents
Industrial property rights are governed by the Brazilian Industrial Property Law (BIPL), which covers patents, trade marks, service marks, collective and certification marks, indications of origin, industrial designs, trade secrets and unfair competition law. This law, which came in force on May 15, 1997, also covers procedures and lays down criteria for the allocation of damages.

In Brazil, patent protection is also basically regulated by the Paris Convention of 1883 (as reviewed in Stockholm in 1967) and the TRIPS Agreement1. Brazil is a member of the Patent Cooperation Treaty (PCT), as well.

The applicability of TRIPS has been subject to a great deal of controversy. First, there were some dissents between the Government and private practitioners about its date of application: January 1, 2000 for the former, and January 1, 1995 for the latter. Secondly, there is still some controversy about whether the TRIPS requires the extension of patents granted under the preceding legislation with a 15-year term and which were alive at the date of application of the new rule. The Brazilian Patent and Trademark Office (INPI) has been continuously denying administrative requests for extension of patents. In a decision issued after January 1, 2000 in connection with Brazilian Patent PI 8403932 in the name of Bassani Ticino S.p.A., INPI acknowledged that as a result of a panel proposed by the U.S.A. against Canada on the issue of the extension of patent term, it was determined by WTO that all patents that are still in force on the “date of application” of TRIPS in a member country should have their term extended to at least 20 years. The same decision added that according to the official position of the Brazilian Government the “date of application” for Brazil should be of January 1, 2000, and finally it refers to the fact that the Ministry of Development, Industry and Commerce, to which the Patent Office is subordinated, has issued an official report in 1997 (CONJUR Nº 24/97), which denies the applicability of TRIPS as a ground for extending the term of patents, at the face of which the Patent Office is prevented from taking any action on those grounds. Therefore, briefly, that decision implicitly recognizes that owners of patents which were alive on January 1, 2000 are indeed entitled to an extension, but that as a matter of hierarchy INPI is prevented to act accordingly.

Notwithstanding INPI’s position, among several court decisions involving the extension of patent term from 15 to 20 years, the vast majority is in favor of the applicability of TRIPS to this effect.

Patents are granted by INPI2. The basic patentability requirements which are examined by INPI are novelty, inventive step and industrial applicability. Patentable inventions include either products or processes, and include chemicals, pharmaceuticals, foodstuffs and transgenic microorganisms.

Under Law 9279/96 patents of invention are granted for a period of 20 years from the filing date. The law also provides for a minimum term of 10 years from the date of the grant of the patent. For patents of utility model, these terms are 15 and 7 years, respectively.

The current law does not provide for formal pre-grant oppositions, but any interested party – including the applicant – is entitled to submit comments and evidence concerning patentability issues at any time up to the end of examination.

Furthermore, according to Sec. 51 BIPL, within 6 months from the grant any person having legitimate interest may file an administrative nullity action before INPI and INPI may also institute nullity proceedings ex officio. Moreover, nullity of a patent can also be judicially requested at any time during the life time of the patent or even after its expiration as a matter of defense e.g. in the course of an infringement action.

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