Ruling reaffirms the scope of the inventor’s “grace period” and sets a precedent against the overreach by the Brazilian Patent and Trademark Office (BPTO).

Ruling reaffirms the scope of the inventor’s “grace period” and sets a precedent against the overreach by the Brazilian Patent and Trademark Office (BPTO)

In a significant victory for innovators, a Brazilian Federal Judge has issued a ruling that reaffirms the scope of the inventor’s “grace period” and sets a precedent against the overreach by the Brazilian Patent and Trademark Office (BPTO).

The decision not only annulled the BPTO’s improper rejection of a key biotechnology patent application but, in a move championing judicial efficiency, ordered the BPTO to grant the patent directly. This outcome, secured by the DANNEMANN firm for the applicant, provides a robust new legal foundation for patent holders facing similar challenges in Brazil.

The case centered on patent application PI9914746-7, filed in 1999 for an invention that enhances insect resistance in corn crops. After more than fifteen years of examination, the BPTO rejected the application, primarily arguing that it lacked inventive step. The BPTO’s entire argument was based on a single prior art document: an international patent application published less than a year prior to the priority date. Crucially, that earlier application was also from the applicant’s own inventors.

The central argument, which the trial judge fully adopted, was that the BPTO’s action was illegal. Brazilian IP Law provides a 12-month “grace period,” a fundamental safeguard that prevents disclosures originating from the inventor from being used to destroy the novelty or inventive step of their subsequent patent filing. The BPTO contended that this protection did not apply to formal patent publications.

The trial judge flatly rejected this interpretation. Affirming a core principle of statutory construction, the judge ruled that where the law speaks broadly of “disclosure,” the BPTO cannot create limitations that the law does not specify. A published patent application is undeniably a form of disclosure based on information from the inventor, and it therefore falls squarely within the grace period’s protection.

By using this document as the basis for its rejection, the BPTO committed a fundamental error of law, rendering its rejection void.
The trial judge also dismantled the BPTO’s secondary grounds for rejection. It dismissed the finding of “insufficient disclosure,” noting that the application provided the invention’s complete polynucleotide sequence, which is all a skilled professional would need to reproduce it. The judge correctly classified the BPTO’s demand for additional experimental data on how the sequence was developed as an “excessive” requirement without legal basis. This practical, substance-focused approach is a welcome rebuke of the procedural formalism that can often stifle innovation.

Perhaps the most impactful aspect of this decision is the remedy. Recognizing the extreme delay – with the application pending for over two decades – the trial judge invoked the constitutional principles of judicial economy and the reasonable duration of proceedings. Instead of simply remanding the case for another lengthy round of re-examination, the trial judge ordered the BPTO to grant the patent within 60 days based on a clear and precise set of claims.

This ruling is more than a single case victory; it is a strategic benchmark. It confirms that the 12-month grace period is a robust and expansive right for innovators in Brazil. It signals that the judiciary is willing to override the BPTO’s decisions, which are founded on flawed legal interpretations and excessive formalism. Most importantly, it establishes that courts can provide an efficient remedy against BPTO’s inertia, ensuring that valuable inventions are not lost in a bureaucratic labyrinth.

This successful outcome serves as an inspiring message to companies and inventors alike: when faced with improper rejections from the BPTO, it’s vital to stand firm and defend your patent rights. The path forward for innovation in Brazil is brighter, and this ruling raises hope for a future where creativity and progress flourish unimpeded.