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A brief comparison of administrative nullity proceedings for patents in Brazil, the United States and Europe

by Maria Moura Malburg

June 01, 2006

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Administrative nullity proceedings provide for the possibility of patents being canceled while still in the administrative sphere. Such proceedings are advantageous over judicial actions, since they are less costly and normally more expeditious, and they allow the patent’s merit to be assessed by specialists.

In Brazil, administrative nullity of a patent may be requested at the Brazilian Patent and Trademark Office (INPI) ex officio or by any legitimately interested third party within six months after the patent is granted. Article 50 of Industrial Property Law No. 9,279/96 establishes the following reasons for administrative nullity of a patent: (I) noncompliance with any legal requirement; (II) in the case where the invention is not sufficiently described, so as to allow a person skilled in the art to reproduce it, or if the patent’s claims are not fully supported by the specification; (III) if new matter is added after the patent was filed; and (IV) omission of a procedural formality essential to the granting of the patent.

On notification of an administrative nullity proceeding in the Patent Office Gazette, the patent owner is entitled to file a response within 60 days of such notification. After that, the INPI issues a preliminary opinion with respect to the approval or denial of nullity and opens the possibility of both parties presenting comments thereto within 60 days. The final decision is issued by the president of the INPI, closing the administrative phase of the proceeding. Such decision may only be challenged judicially.

In Europe, any third party may request administrative nullity of a European patent by submitting an opposition to the European Patent Office (EPO) within nine months of the patent’s granting. The following reasons for requesting nullity of a European patent may be argued: (I) lack of novelty, inventive step or industrial applicability; (II) insufficient disclosure of the invention; (III) addition of new matter after the filing of the patent; and (IV) the subject-matter is not patentable.

In the first instance of the opposition proceeding, the parties may be invited by the EPO to reply to comments presented by the other party or by the EPO itself, as many times as necessary. Oral proceedings may also be requested ex officio or by the parties involved. The European opposition proceeding further provides for an appeal against the final decision in the first instance, which is judged by the EPO Board of Appeal.

In the United States, administrative nullity of a patent may be obtained by requesting ex parte or inter partes reexamination at the United States Patent and Trademark Office (USPTO).

Ex parte reexamination may be requested ex officio, by third-parties, or by the patent owner himself at any time during the patent’s term. Such request must identify an issue pertinent to the invention’s patentability that was not considered during the prosecution of the patent. In the absence of such an issue, the USPTO may deny the request for reexamination.

During the ex parte reexamination process, the petitioner may not participate in the proceedings; only the patent owner may file comments or amend the patent and participate in oral proceedings with the examiners. The final decision of the reexamination may be appealed.

The inter partes reexamination is similar to the ex parte, except that the petitioner may participate actively in the proceedings and is allowed, therefore, to respond on the comments presented by the patent owner.

The Brazilian administrative nullity proceeding is quite simple compared to equivalent proceedings in other countries. However, it requires that the party requesting nullity demonstrate its legitimate interest in the case.

Currently in Brazil, an administrative nullity proceeding takes one and a half to two years from initial notification until the issuance of its final decision. From 2000 to 2004, the INPI issued, on average, 370 decisions per year on administrative nullity of patents. 

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Maria Moura Malburg

Agente da Propriedade Industrial , Engenheira Eletrônica e de Computação

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