Arbitration and the Brazilian Patent And Trademark Office – Bpto [Inpi]

Arbitration is advancing quickly in Brazil. It involves an alternative method of dispute resolution, at the free and spontaneous will of the parties, enabling a decision to be handed down without the state’s intervention that has the character and effectiveness of a court ruling through the intervention of one or more persons who receive the powers of a private agreement.

Several discussions have arisen from the growing number of cases in arbitration, including in the field of Industrial Property and, especially, about the possibility of the Brazilian Patent and Trademark Office – BPTO, responsible for assessing and granting Industrial Property Rights (in particular, trademarks and patents), acting in the arbitral realm in the country.

Undoubtedly, Industrial Property plays a major role in the consolidation of developing countries. An environment of effective and rapid industrial property protection enables, among others, the technological development and stability necessary for investments in the country, where arbitration can play a crucial role.

It is important, however, to understand if there is a system in the country that is analogous to certain foreign systems 1 and capable of allowing discussion and an arbitral decision on the nullity of Intellectual Property rights, in which the BPTO must be a party 2 to the dispute through express legal provision 3 .

With the advent of Law 13,129/15, discussions on the legality of the use of alternative dispute resolution related to waivable rights by entities of the direct and indirect Public Administration were eliminated.

However, there is still a great deal of confusion as to what rights would be considered as waivable, and thus eligible for arbitral discussion. On this issue, it is important to remember the difference between the primary public interest, the “true” interest for which the Public Administration is intended, achieving the interests of society and supremacy over private interests, and the secondary interest, which is nothing more than the proprietary interest of the State. The (primary) public interest is always unwaivable, whereas proprietary rights related to public goods and services are not.

In order to assess the possibility of arbitration, it is enough to observe the objective requirements for arbitration in each case in which the BPTO figures, in order to prove that such disputes will involve only waivable proprietary rights, 1 Such as in the United States: Julian M. Lew and Loukas A. Mistelis, Comparative International Commercial Arbitration, ch. 9: Arbitrability: Intellectual Property Rights, Kluwer, 2003; Trevor Cook and Alejandro Garcia, International Intellectual Property Arbitration, cf. 4: Arbitrability of IP Disputes, Kluwer, 2010.

2 Regardless of the procedural position that the government agency actually supports or occupies.

3 Articles 57 and 175 of Law 9,279/96.

Thus understood as those that can be transferred or disposed of by their holders to third parties. Rights that are negotiable and subject to management acts. And the protection of Industrial Property is nothing more than a social agreement, whereby the Public Administration grants a temporary privilege (a trademark or patent) resulting from creations of the intellect that, upon falling into the public domain, benefit the whole of society

4 . They are, therefore, fully waivable rights in their essence. The BPTO is hence fully capable of implementing arbitration in the disputes in which it is involved, focusing on unburdening the Judiciary, as well as ensuring speed and effectiveness in the resolution of eminently technical conflicts, benefiting the public interest and not conflicting with it

5 . In discussions on the validity of trademarks and patents, in view of the principle of efficiency, there is no obstacle to the BPTO, making a judgment based on reasonableness and need, opting for arbitration. Now, whoever resorts to arbitration does not waive their rights, but only chooses another path. And the unwaivability of the public interest is not the same as the unwaivability of court proceedings.

The BPTO’s managers and may can perfectly well encourage arbitration if they consider that the office itself, often in the course of judicial disputes, supports the plaintiff’s claim of trademark or patent nullity, requesting the upholding of the claims made on the merits, or ratifies agreements of various natures (such as the coexistence of trademarks that were previously held as conflicting).

Apart from the intrinsic advantages of arbitration (speed, reduced resources, technical expertise of the arbitrators, experts and professionals involved), the BPTO will certainly benefit financially, since the government agency invariably bears fees for losing cases, while in arbitral proceedings such burden may be previously removed. The same can be observed with respect to the costs of the proceedings, which may be allocated to the private parties involved.

It can be concluded that there are no prohibitions on the BPTO taking part in arbitral tribunals, so that dispute resolution involving Industrial Property can become ever faster and always respecting the cooperation and autonomy of the disputing parties, if the exclusionary stance taken nowadays is changed.

For example, take the BPTO’s tremendous resistance to attending conciliation and mediation hearings under Article 334 of the Code of Civil Procedure, which demonstrates that it essentially deals with a matter of mindset.

4 BARBOSA, Denis Borges. Uma introdução à Propriedade Intelectual [An introduction to Intellectual Property]. 2 nd Edition. Publisher Lumen Juris, 2003.

CERQUEIRA, João da Gama. Tratado da Propriedade Industrial [Work on Industrial Property]. Volume I – 3 rd Edition. Da Propriedade Industrial e do Objeto dos Direitos [Industrial Property and the Subject Matter of Rights]. Publisher Lumen Juris, 2010.

5 On the topic, see MAZZONETTO, Nathalia. Arbitragem e Propriedade Intelectual [Arbitration and Intellectual Property]. Publisher Saraiva, 2017.

At this juncture, instead of expressing its unrestricted opinion about its lack of interest in adopting alternative dispute resolution methods, especially arbitration, ideally the BPTO’s internal regulations would be modernised, in compliance with the Code of Civil Procedure and the Law that regulates self-determination in the Public Administration (Law 13,140/2015)

6 , with the setting of parameters for the execution of agreements and alternative methods for settling disputes involving Industrial Property.

6 Following the example of the São Paulo State Government, which, on 31 July, 2019, issued Decree 64,356, creating rules and instructions for direct and indirect Public Administration and its agencies in dispute resolution through arbitration.