New proposed measures against the patent backlog in Brazil

New proposed measures against the patent backlog in Brazil

The Brazilian Ministry of Industry, Foreign Trade and Services (MDIC) and the National Institute of Industrial Property (INPI) have just opened a public consultation on a proposed regulation for a simplified procedure for the allowance of patent applications. This initiative is basically directed to address the considerable existing patent examination backlog.

This public consultation is a preliminary step for opinions on the proposal for the simplified allowance procedure but NO rules are yet in force. The simplified procedure will be applicable if the corresponding regulation is enacted.

The proposal establishes that patent applications filed or with the national phase initiated up to the date of publication of the future regulation and with examination requested will be allowed within 90 days following a notice of admissibility of a patent application in the simplified procedure, provided that they meet certain requirements and are not the subject of third-party observations (also called pre-grant oppositions). Patent applications for pharmaceutical products and processes are in principle excluded from this simplified procedure apparently for political reasons and in view of the fact that they are subject to the scrutiny of ANVISA (the local regulatory agency).

According to the proposed simplified procedure, the patent applications to which it applies will be automatically allowed apparently without substantive examination and provided that a few 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 filing of the patent application or request for entry into the national phase (in the case of PCT applications) should have occurred up to the date of publication of the future regulation;

3- The application has been published or the early publication requested up to thirty days from the date of publication of the future regulation;

4- Examination of the patent application should have been requested up to 30 days from the date of publication of the future regulation;

5- Annuities payments must be in order; and

6- No official actions regarding to patentability have been published.

According to the proposal, once admission to the simplified procedure has been published, there will be a ninety-day period for the publication of allowance of the application.

The applicant of a patent application will be entitled to request, within the above 90-day period, that its patent application be excluded from the simplified procedure, and undergoes a regular substantive examination.

The 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 such as therapeutic methods, certain living beings, etc.

There are many steps would have to be fulfilled for the implementation of the proposal and also many doubts as to the validity or enforceability of patents to be granted under the proposed procedure.

Anyhow our firm is ready to review your patent portfolio and strategy in Brazil in order to check whether any actions will be required such as to request early publication and examination, to file third-party observations against applications filed by competitors, to request the exclusion of certain applications from the simplified procedure, etc.

Since the regulation, if adopted, will encompass only patent applications filed or entered into the national phase before the date of publication of the regulation, you may wish to determine if you should anticipate the filing or entry of applications in Brazil in order to allow them to benefit from the proposed simplified procedures. We are ready to assist you in making this assessment.

According to the text of the public consultation, interested parties may provide comments and proposals up to August 21, 2017 concerning the proposed simplified procedure. After this period, the MDIC and INPI will analyze the proposals received and decide whether or not such a simplified procedure will be implemented and under which conditions.

Please let us know if you have any considerations concerning the proposed procedure so that we can either incorporate them to our response and/or advise you as to the appropriate way to submit them.

We will keep you posted on any developments in this matter.

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