E-Marcas: All Our Problems Solved?

SIt is widely known that the Brazilian Patent and Trademark Office (BPTO) is facing a massive backlog of trademark and patent applications waiting for review. In an effort to reduce delays and modernize procedures, the agency’s current administration decided to adopt an electronic system for the trademark department, which is called "E-Marks."

This system, which has been in the testing phase since August, became operational on September 1st of this year. Traditional paper applications will be accepted through January 31, 2007, after which all applications must be submitted electronically.

Although it is commendable, the new electronic procedure is the subject of concern and criticism by users.

The main problem cited is the BPTO’s refusal to accept both options, electronic or traditional, so that users may choose. Mandatory use of the electronic system penalizes users who do not have sufficient resources or technological capabilities. Even in developed countries like the United States, users may file paper applications, paying higher fees to do so.

Under the new system, there is a limit to the size of electronic files to be submitted. Therefore, users must fragment longer applications that have numerous attachments in order to send them to the BPTO. This is one of the difficulties that users will have to face.

Another difficulty associated with the new BPTO system is related to identifying the goods and services protected by the mark. The application form does not allow users to specify goods and services at will. Rather, they must select from a list provided by the agency itself. If a product or service is not on the list, the user must formulate an inquiry, which not only raises the fees, but also delays the application process; it is estimated that it takes a week to issue an inquiry response. Where the list of goods and services is extensive, users must spend more time and effort to adapt it to the BPTO list.

These are just some of the issues that concern users: day to day use of the new system will uncover its deficiencies and prompt crrections and modifications will be needed.

It is also feared that adoption of the electronic system alone for trademark procedures will not reduce the application and registration backlog. The electronic system needs to be combined with major structural and operational changes by the BPTO in order to dramatically reduce this backlog and promote the desired expedition of case processing.