by Cândida Ribeiro Caffé e Mariana Reis Abenza
January 05, 2021
In recent months, despite the challenging circumstances of the global economic scenario, the Brazilian Patent and Trademark Office – BPTO [National Institute of Industrial Property – INPI] has adopted initiatives seeking to reduce the time taken to examine patent applications (backlog) and aiming to encourage investment in and the development and commercialisation of new technologies. Among these initiatives are Ordinances INPI no. 294/2020, INPI no. 247/2020 and INPI no. 331/2020, which came into force throughout the second half of this year and may contribute to stimulating the licensing of patents and technology transfer in the country.
Based on the pilot project instituted by Ordinance INPI no. 294/2020, as of September 2020, two new types of priority prosecution for patent applications were created, one for technologies available on the market and the other for technologies resulting from public financing. Thus, provided that certain requirements are respected, patent applications that are the subject of license, assignment, importation or exportation agreements, became eligible for priority examination. The same happens with technologies originating from projects developed with financial support coming from public revenue.
In addition, with the express and stated objective of facilitating technology transfer and the licensing of industrial property assets, the BPTO has also launched the “IP Showcase” project, in order to stimulate the licence offer already set forth in Article 64 et seq. of the Industrial Property Law. This Project was instituted by Ordinance INPI no. 331/2020, which, as in the case of countries such as the United States, Denmark, Japan and Chile, created, as of 1 October 2020, a platform for the publication of announcements related to industrial property assets for sale.
Both patents granted by the BPTO and patent applications that are still pendinganalysis may be offered in the IP Showcase, while some other requirements must be observed, among which is confirmation by the applicant that the technology in question is not the subject of an exclusive license agreement. Despite starting only with the offer of patents and patent applications, the expectation is that other industrial property assets, such as industrial designs, computer programs, integrated circuit topographies and trademarks, may gradually be offered to the market through the IP showcase made available by the BPTO. Thus, the IP showcase creates an extremely favorable space for the offer and demand for technological solutions in the market, allowing potential interested parties in such solutions to have knowledge of the products and processes available and to start negotiations with the respective owners.
Another incentive measure that should be highlighted was Ordinance INPI No. 247/2020, which granted startups (as defined in Complementary Law No. 167/2019) the right to request priority and accelerated examination of their patent applications at the BPTO. This measure aims to stimulate the development of new technologies and investment by startups to protect their innovations through patent applications, with the potential to stimulate investments in the country’s own startups.