by Ivan B. Ahlert e Saulo Murari Calazans
December 01, 2017
The proposal as submitted to public consultation – and which will presumably be amended before final publication – established that patent applications filed or with the national phase initiated up to the date of publication of the future regulation and with examination requested up to thirty days after publication of the regulation will be allowed following a notice of admissibility of a patent application in the simplified procedure. There are however speculations that the simplified procedure will only apply to applications filed/entered up to a certain past date. Patent applications for pharmaceutical products and processes are in principle excluded from this simplified procedure.
Moreover, according to the proposed simplified procedure, the patent applications to which it applies will be allowed without substantive examination and provided that some requirements are met, as follows:
1. Certificates of addition, divisional applications and, as above mentioned applications covering pharmaceutical products and processes are not eligible;
2. The application was published or the early publication requested up to thirty days from the date of publication of the future regulation;
3. If not yet requested, examination must be requested up to 30 days from the date of publication of the future regulation;
4. Annuities payments must be in order; and
5. No official actions regarding to patentability have been published, and no third party observations have been filed.
According to the proposal, when applicable INPI will publish the admissibility of each patent application to the simplified procedure, initiating a 90-day period for the applicant to opt-out of this procedure and for subsequent allowance of the application if no opt-out is requested.
If the applicant opts-out of the simplified procedure, the application will undergo a regular substantive examination. Whether a request for opt out will be a simple form or be required to contain substantive arguments is still to be determined.
Under the simplified procedure, a patent application will be allowed as published or notified upon entry into the national phase and the letters-patent will be issued with reservations regarding the legal prohibitions of articles 10 and 18 of the Brazilian IP Law (Law 9.279/96), which refer to subject matter not eligible for patent protection, such as business methods, therapeutic techniques, and some living beings, for example. It is also to be determined if the regulations to be approved will provide for the opportunity to amend the claims before a simplified allowance. In our opinion, if considered appropriate amendments should be filed, which in any case will be part of the files and can be later relied upon if necessary during an administrative (if available) or judicial substantive examination.
Whether or not patents granted under the simplified procedures will be held valid and enforceable depends primarily on the type of legal instrument to be approved – probably a provisional measure signed by the President of Brazil – and on the final provisions of the regulations. Our preliminary opinion relies in that such patents should be presumed valid, in particular in view of the provisions of Law 9.279/96 in the sense that “In the absence of proof to the contrary, the applicant is presumed to have the right to obtain a patent” (Article 6, § 1). Anyway, there will be a possible impact on the ability to obtain preliminary injunctions, although the circumstances of each case will be the prevailing elements for a judge to consider.
Specially applicants having a large number of patent applications pending in Brazil should start outlining a strategy to be followed with respect to their portfolios in view of the possible new regulations.