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Unconstitutionality of Paragraph 1 of Article 36 of the Brazilian IP Law for Violating the Principle of Proportionality

by Bernardo Marinho

June 12, 2020

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Abstract

Article 36, paragraph 1, of the Brazilian IP Law, when determining the definitive lapse of a patent application upon failure to reply to an office action, violates the constitutional principle of proportionality. It is unreasonable to deny protection for a patentable invention due to the failure to reply to an office action (issued when a patent application has an irregularity that can be remedied) when such denial does not happen upon failure to reply to an unfavourable opinion (issued when the invention is not patentable).

O artigo 36, parágrafo 1º, da LPI, ao determina arquivamento definitivo de estabelecer que pedido de patente na ausência de resposta a parecer de exigência, viola o princípio constitucional da proporcionalidade. Não é razoável negar proteção para invenção patenteável pela ausência de resposta a parecer de exigência (emitido quando o pedido de patente tem irregularidade sanável) ao passo que tal negativa não ocorre na ausência de manifestação a parecer desfavorável (emitido quando a invenção não é patenteável).

Key words: unconstitutionality, proportionality, office action, shelving, patent

!sum    Summary: 1. Introduction – 2. Important clarification on the patent system – 3. Constitutional principle of proportionality – 4. Failure to reply to an unfavourable opinion or office action brings about disproportionately different consequences – 5. Paragraph 1 of Article 36 of the IPL violates the principle of proportionality – 6. The IPL system goes against the principle of efficiency – 7. Conclusion – Bibliography

1. Introduction

A patent, by affording a temporary exclusive right to an invention, ensures the possibility of obtaining a fair financial return on the investment made in the development of that invention and, therefore, provides the incentive for innovators to continue investing in research and innovation efforts.

In return, society benefits from the creation of new technologies that improve the quality of life and well-being of people, as well as from the dissemination of new and useful knowledge, which also allows third parties to exploit the invention after the patent has expired.

A patent is, therefore, an important instrument for the social interest and the technological and economic development of any country. Probably for this reason, the right to patents in Brazil is a constitutional provision that is listed among the fundamental rights and guarantees in accordance with item XXIX[1] of Article 5 of the Constitution of the Federative Republic of Brazil of 1988 (CRFB/1988).

As paragraph 1 of Article 36 of the Industrial Property Law (IPL) – Law No. 9,279/1996 – establishes that failure to reply to an office action results in the definitive lapse of a patent application and, consequently, significantly terminates the possibility of obtaining patent protection for an invention, this study will analyse its constitutionality, more specifically in light of the principle of proportionality.

2. Important clarification on the patent system

Before beginning the study on the constitutionality of Article 36, §1, of the Brazilian IP Law, it is important to clarify two peculiarities of the patent system:

?  inventors have a unique and ultimate opportunity to seek and, if successful, obtain patent protection for their inventions; and

?  the two types of substantive opinions that the BPTO can issue before handing down a decision rejecting a patent application.

   2.1. There is no second opportunity in the patent system

Inventors have a unique and ultimate opportunity to seek and, if successful, obtain patent protection for their invention.

This is because, in accordance with the provisions of Articles 8[2] together with 11[3], heading, of the Brazilian IP Law, a patent will only be granted when the invention for which protection is sought has not previously been made public, meeting the requirement of novelty.

Accordingly, if a patent application for a particular invention is unsuccessful, a new patent application for an identical invention will unfailingly be rejected due to lack of novelty since that invention will have already been disclosed by the first patent application.

In view of this peculiarity of the patent system – i.e., there is no second opportunity – it is reasonable to think that the Brazilian IP Law should be interpreted in a way that does not create inappropriate obstacles to patents being granted.

It cannot be forgotten that a patent is an important instrument for the social interest and for the technological and economic development of the country inasmuch as it reciprocally affects:

?  the interests of society, as it promotes the development of new technologies and disseminates new and useful knowledge, ensuring that the quality of human life and the well-being of society is continuously improved; and

?  the private interests of the patent owner, since it guarantees a return on investment made in the development of new technologies.

Incidentally, this seems to have been the intention of the legislator since failure to comply with practically all deadlines of the stages for the administrative process of the patent system established by the Brazilian IP Law – the sole exception being the deadline for submitting a reply to an office action – does not result in the loss of the right to protection or to seek such protection:

 

Stage Term/Deadline Second opportunity
Proving priority On the filing of the patent application

(Article 16, heading, Brazilian IP Law)

180 days from filing
(Article 16, §3, Brazilian IP Law)
Complying with a requirement on the formalities of a patent application 30 days
(Article 21, Brazilian IP Law)
Administrative appeal against the lapse
(Article 212, Brazilian IP Law)
Requesting a substantive examination of the patent application 36 months from filing
(Article 33, Brazilian IP Law)
60 days to request the resume of the application
(Article 33, sole §, Brazilian IP Law)
Replying to an unfavourable opinion from the BPTO 90 days from the opinion
(Article 36, heading, Brazilian IP Law)
Examination proceeds
(Article 36, §2, Brazilian IP Law)
Payment of fee to issue letters-patent 60 days from granting
(Article 38, §1, Brazilian IP Law)
30 days after the end of the term
(Article 38, §2, Brazilian IP Law)
Replying to a request for administrative nullity 60 days from notification
(Article 52, Brazilian IP Law)
Nullity procedure continues
(Article 53, Brazilian IP Law)
Replying to an intermediary opinion from the BPTO in a nullity procedure 60 days from notification
(Article 53, Brazilian IP Law)
Nullity procedure continues
(Article 54, Brazilian IP Law)

So much so that the distinguished Superior Court of Justice has already refuted an attempt by the BPTO, through its Resolution No. 113/2013, to restrict the possibility of the patent or patent application owner paying the delayed annuities set forth in Article 87 of the Brazilian IP Law and, subsequently, proceeding with the pursuit for protection or with the protection:

2. The Brazilian IP Law (Law No. 9,279/1996) sets forth, in Article 87, that, having been notified of the lapse of the application or of the extinction of the patent due to failure to pay an annual fee, the owner can request, in a period of three months from notification, restoration, upon payment of a specific fee.

3. Mandatory notification since it is necessary for the exercise of a right guaranteed by law to the applicant or patent holder.

(REsp no. 1669131/RJ. Judging Body: 3rd Panel. Reporting Justice Paulo de Tarso Sanseverino, Justice Gazette: 27 June, 2017)

   2.2. Intermediary opinions that the BPTO must issue if it deems that the patent application should not be granted

During the examination of a patent application, if the BPTO holds that the claimed invention – that is, the one defined in the set of claims – is not patentable or that such patent application contains an irregularity that can be remedied, respecting the principles of due process, the adversarial system and a full defence, the applicant has the opportunity to reply. This is the rule of Article 35[4] of the Brazilian IP Law.

In this regard, it is worthwhile to set out the teachings of the illustrious industrial property specialist DENIS BORGES BARBOSA[5]:

At the time of the technical examination, the search report and opinion on the patentability of the application will be prepared by the BPTO, or even technical office actions will be required by the examiner. Then, it will be the applicant’s responsibility to make the application compatible with the nature claimed, if the opinion so indicates; also in reply to the opinion, there will be reformulation of the application or division; or also the technical office actions will be met.

The way in which this opportunity to reply – which may be through the presentation of technical comments on the patentability of its invention and/or making amendments to the patent application – is given varies according to the “problem” detected by the BPTO.

If the BPTO holds that the entire invention claimed is not patentable – for example, due to lack of novelty and/or inventive step -, an unfavourable opinion – order code 7.1 – is issued.

If the BPTO holds that the invention, in whole or in part, is patentable, but the patent application contains an irregularity that is remediable – for example, the invention is not precisely claimed or there are typographical errors – an office action is issued – order code 6.1.

This procedure has been followed by the BPTO for a long time, as determined by the old guidelines for the examination of patent applications created by Resolution No. 092/2002 of the said Office:

1.11.1 Issue of office actions

When prior art is not found that fully anticipates the application but it is irregular, office actions can be formulated based on Article 36 of the Brazilian IP Law, to remedy the application or correctly delimit the inventor’s rights.

Before issuing any office action at any stage of the examination, the examiner must have thoroughly analysed the application to include all his/her objections at this  time. (…)

1.11.3 Issue of unfavourable opinions

The examiner must always issue an unfavourable opinion, in order to afford the applicant the opportunity to reply appropriately and/or to amend its application in order to put it in a position to obtain the required privilege.

The substantiation for the unfavourable opinion must be clearly set out, relating to the respective legal provisions and, if applicable, the relevant prior art documents. (…)

In spite of the said BPTO’s normative ruling having been subsequently revoked by Resolution Nos. 124/2013 and 169/2015, which establish the current guidelines for the examination of patent applications without indicating when an office action or unfavourable opinion should be issued, the reasoning for issuing an unfavourable opinion or office action was maintained.

This fact can be observed in SEI Implementing Measure no. 7/2019/DIRPA/PR published by the BPTO, which establishes the procedures for the first technical examination of a patent application after the preliminary requirements 6.21 and 6.22:

5.3.2 Office Action (order 6.1) – prepared when a subject matter has been identified that meets the requirements for patentability, but changes are necessary for the application to be in accordance with the legislation in force. Office actions handed down must be substantiated on the articles of the Brazilian IP Law cited in item 5.3.1.

5.3.3 Unfavourable Opinion (order 7.1) – prepared when the entire subject matter does not meet the requirements for patentability. A Scientific Opinion must be substantiated on the Articles of the Brazilian IP Law cited in item 5.3.1.

5.3.4 Unfavourable Opinion (order 7.1) – prepared when the entire subject matter claimed fits into Articles 10 and/or 18 of the Brazilian IP Law. A Scientific Opinion must be substantiated on the Articles of the Brazilian IP Law in item 5.3.1.

5.3.5 Unfavourable Opinion (order 7.1) – In the event of the application not being compatible with the correct nature.

5.3.6 Unfavourable Opinion (order 7.1) – In the event of the application containing irregularities relating to Article 22 of the Brazilian IP Law 9,279/1996.

5.3.7 Unfavourable Opinion (order 7.1) – In the event of the application containing irregularities relating to Article 32 of the Brazilian IP Law 9,279/1996, see Resolution PR no. 93/2013.

In short, an office action (order 6.1) is issued by the BPTO when the invention is patentable but the patent application contains an irregularity that can be remedied while an unfavourable opinion (order 7.1) is issued when the BPTO holds that the invention is not patentable.

3. Constitutional principle of proportionality

As the purpose of this study is to analyse the constitutionality of Article 36, §1, of the Brazilian IP Law in light of the principle of proportionality, it should be clarified that such principle, although not explicit in the Brazilian Constitution, is the result of a logical and intuitive consequence of the principles legality, due legal process and justice as asserted by the illustrious Justice LUÍS ROBERTO BARROSO[6]:

The principle of reasonableness or proportionality, terms used here in an interchangeable manner, is not express in the Constitution, but is substantiated on the ideas of due substantive legal process and that of justice. It is a valuable instrument for the protection of fundamental rights and the public interest, since it allows the discretion of the Government’s acts to be controlled and acts as the measure with which a rule must be interpreted in a particular case to better achieve the constitutional purpose embedded in it or arising from the system.

According to the best doctrines, the principle of proportionality works as a kind of normative postulate for the interpretation and application of the law in a correct, fair and reasonable way and, therefore, is a guarantor of fundamental rights:

PAULO NADER[7]

In order to make Positive Law more rational and appropriate to ethical values, the principle of reasonableness and proportionality, through which legal norms must be understood as logical and fair formulas to achieve certain purposes, has currently been enshrined by legal scholars and judges. Such principle establishes limits for the legislator, invalidating the rules that impose unjustified sacrifices on its recipients, when the desired results could be achieved with less burden. The enforcer of the Law would be allowed to change the means employed by the legislator, either by modifying the criterion adopted or just adjusting its degree of intensity, making it proportional to the requirement of the particular case.

 

GUERRA FILHO[8]

It is held that only through the application of the principle of proportionality, can the excesses of restrictions imposed on particular cases be measured and removed, when fundamental rights are in confrontation. The principle of proportionality enables the removal or prevalence of rights, as well as imposing a restriction on unveiled subjective positions for protecting fundamental rights, in short, it is possible to avoid acts being carried out that overstep the restriction of certain rights, in a final analysis, it is the prohibition excess.

As all rules emanating from the Government must comply with the parameter of proportionality in order to be deemed constitutional, it is possible for there to be a substantial defect of unconstitutionality resulting from the excess of the legislative, as pointed out by important legal scholars:

GILMAR FERREIRA MENDES[9]

Excessive power as a manifestation of unconstitutionality constitutes an affirmation of judicial censorship within the scope of legislative discretion or, as settled in German doctrine, in the sphere of freedom of the legislator’s conformation

(gesetzgeberische Gestaltungsfreiheit).

(…)

The ascertainment of the constitutionality of the law with respect to the principle of proportionality or the prohibition of excess includes the very limits of the power of conformation granted to the legislator. This is what can be found in a decision of the Bundesverfassungsgericht in which, after discussing aspects relating to the effectiveness and appropriateness of economic measures enshrined in a legislative act, it was concluded that the legislator had not exceeded the limits of discretion granted to it.

GEORGE MARMELSTEIN[10]

The principle of proportionality is, therefore, a necessary instrument to ascertain the legitimacy of laws and administrative acts that restrict fundamental rights. For this reason, this principle is called the “limit of limits”. “The purpose of applying the proportionality rule, as its name implies, is to ensure that no restrictions on fundamental rights take disproportionate dimensions.

So much is this true that the principle in question is increasingly frequently used as an instrument to evaluate the constitutionality of legal norms in the case law of the distinguished Supreme Court:

4. A comparison between the ceilings defined by the challenged rule with the maximum amounts originally set forth in the governing legislation (R$ 111.50 for the appeal expenses and R$ 9,135.70 for costs) reveals the occurrence of a disproportionate and unreasonable adjustment, in the order of 30,266.36% (thirty thousand, two hundred and sixty-six point three six percent) for the appeal expenses and 659.81% (six hundred and fifty-nine point eight one percent) for costs in general, all this in approximately just 6 years and two months, which reveals a flagrant disregard for the principles of reasonableness and proportionality. 5. Direct Action of Unconstitutionality partially upheld on the merits, only to declare the unconstitutionality of the last ranges of values set forth in items I and XXVII, item “a”, of Table I of the Single Annex to Law No. 12,373/2011 of the State of Bahia, with wording given by Law No. 14,025/2018.

(ADI 5720/BA. Judging Body: Plenary Court. Reporting Justice: Alexandre de Moraes. Justice Gazette: 20 September, 2019)

3. With regard to the rest of the military firefighter’s career, there is no offense to the constitutional principles of impersonality, morality, efficiency or proportionality. The stature limits established by the challenged rule, which reproduce the same requirement imposed on the military in the Armed Forces (1.60m for men and 1.55m for women), are reasonable. 4. Direct Action of Unconstitutionality upheld partially on the merits, to declare partial nullity without reducing the text of Article 11 of Federal Law No. 7,479/1986 (in the wording afforded by Federal Law No. 12,086/2009), with its application to physicians and chaplains being exlcuded.

(ADI 5044/DF. Judging Body: Plenary Court. Reporting Justice Alexandre de Moraes. Justice Gazette: 11 October, 2018)

3. The application of a provision that determines the holding of new elections in the event of a decision by the Electoral Justice that brings about the rejection of a registration, the revocation of a diploma or the loss of mandate of elected candidates does not offend the principles of popular sovereignty, proportionality, economy and the legitimacy and normality of the election process, regardless of the number of votes cast, for simple majority positions – Senators of the Republic and Mayors of Municipalities with less than two hundred thousand voters. 4. Direct action of unconstitutionality, the claim of which is rejected on the merits. Determination of the following argument: “Federal legislation that establishes new elections for simple majority positions is constitutional – that is, Mayors of Municipalities with less than two hundred thousand voters and Senators of the Republic – in cases of vacancy due to electoral cases”.

(ADI 5619/DF. Judging Body: Plenary Court. Reporting Justice Roberto Barroso. Justice Gazette: 08 March, 2018)

4. Failure to reply to an unfavourable opinion or office action generates disproportionately different consequences

Although the term for submitting a reply to an office action or unfavourable opinion is the same – namely, 90 days in accordance with Article 36, heading, of the Brazilian IP Law Brazilian IP Law -, the failure to reply to the first brings about a disproportionately more serious consequence than failure to reply to the second.

In accordance with Article 36, §1[11], of the Brazilian IP Law, if no reply to an office action is submitted (order 6.1), which is issued when the invention is patentable and there is an irregularity that can be remedied, the patent application is definitively lapsed.

Definitive lapse means a denial of the constitutional guarantee of obtaining patent protection for an invention since: (i) a decision that definitively lapses a patent application is unappealable in the sphere of the BPTO pursuant to Article 212, §2[12], of the Brazilian IP Law; and (ii) it is not possible to seek the desired patent protection through a new patent application in the future due to lack of novelty.

In contrast, the failure to reply also in a term of ninety (90) days to an unfavourable opinion (order 7.1), which is issued when the BPTO holds that the invention is not patentable, does not result in a denial of the abovementioned constitutional guarantee.

Based on Article 36, §2[13], of the Brazilian IP Law, the BPTO examination continues with the issuance of another unfavourable opinion or, more likely, with the publication of a rejection decision that can be administratively appealed in a term of sixty (60) days in accordance with Article 212, heading[14], of the Brazilian IP Law.

In short, failure to reply to an office action, which is issued when the invention is patentable and the patent application contains an irregularity that can be remedied, results in definitive lapse and, consequently, loss of protection, whilst failure to reply to an unfavourable opinion, which is issued when the BPTO holds that the invention is not patentable, does not generate such a serious consequence since the examination of the patent application continues.

Such fact is precisely confirmed by the specialised doctrine in industrial property:

DANNEMMAN SIEMSEN INSTITUTE[15]

Based on the previous paragraph, it can be seen that an office action must be replied to, complying with it or contesting its content, under penalty of definitive lapse, while in the event of an unfavourable opinion there is no obligation to reply. In the latter case, the most likely consequence of the failure to reply will be the rejection of the application, which can be appealed.

DENIS BORGES BARBOSA[16]

If the BPTO’s opinion is that the application is not patentable or that it is incompatible with the nature claimed or it formulates some office action, the applicant will be notified to reply in a term of 90 days. At this stage, two things can happen: if the office action is not replied to, the application will definitively be lapses. There is no appeal against this decision.

If the office action is replied to, even if it is not complied with, or its formulation is challenged, and whether or not there is an expression of opinion on the patentability or compatibility, the examination will continue.

In short, the consequence of failure to reply to an office action (order 6.1) is disproportionately more serious than that resulting from failure to reply to an unfavourable opinion (order 7.1).

5. Paragraph 1 of article 36 of the Brazilian IP Law violates the principle of proportionality

In view of the principle of proportionality, any restrictions on fundamental rights must be appropriate, necessary and proportional in a restricted sense, as taught by professors CLÁUDIO PEREIRA DE SOUZA NETO and DANIEL SARMENTO[17]:

Reasonability is also used to demand the presence of a pertinent relationship between the measure set forth by the legislator and the criteria adopted by it to define its recipients. (…)

Another dimension of reasonability concerns the requirement for regulatory consistency. In this regard, there is talk of internal coherence and external coherence of the measure. Internal coherence requires that there be no contradictions in a normative ruling, not only in the strictly logical sense, but also teleological or axiological. (…)

Another dimension of the principle in question is the so-called reasonability as equity. This facet of reasonability is mobilised when it is identified that the application of a general and abstract rule to a specific case would produce profoundly unfair or inappropriate results.

In this context, the rule set forth in paragraph 1 of Article 36 of the Brazilian IP Law – failure to reply to an office action, which is issued when an invention is patentable and the application contains an irregularity the can be remedied, results in definitive lapse – is:

?  inappropriate: the rule disproportionately limits the constitutional guarantee of obtaining patent protection for a patentable invention. It is unreasonable that protection for a patentable invention is denied due to the failure to reply to an office action while the possibility of protection continues to exist for an invention that is not considered patentable by the BPTO despite the failure to reply to an unfavourable opinion;

?  unnecessary: the said rule is not simultaneously the smoothest or least onerous to solve the problem of the delay in examining patent applications sufficiently. To do so, and still preserving the constitutional guarantee of obtaining protection for a patentable invention, the legislator could have established that the consequence of failing to reply to an office action would be, for example, rejection, as occurs in the hypothesis of failure to reply to an unfavourable opinion; and

?  disproportionate in the strict sense: from a weighting exercise, it can be seen that the adoption of the measure brought more harm (denial of protection for a patentable invention) than benefit (pure and simple procedural speed) – see the next chapter. The search for speed does not mean ignoring constitutional guarantees, but rather affording the process a pace that is as swift as possible, that is, a process with a reasonable duration (Article 5, item LXXVIII[18], of the CRFB/1988).

About this last element of proportionality, the brilliant teaching of professor MARIA SYLVIA DI PIETRO should be set out[19]:

(…) efficiency is a principle that is added to the other principles imposed on the public administration, and cannot override any of them, especially that of legality, under penalty of serious risks to legal security and the rule of law itself.

The rule in §1 of Article 36 of the Brazilian IP Law is shown to be even more disproportionate since, unlike other request to the Public Administration, which can usually be reformulated in the event of failure, a new patent application for the invention described in the previous patent application will unfailingly be rejected due to lack of novelty (Articles 8 together with 11, heading, both from the Brazilian IP Law).

Thus, the said legal provision is unconstitutional since it offends the principle of proportionality and violates the objective of patent protection, that is, that of safeguarding the invention.

At the end of the day, it is not common sense to deny patent protection for an invention that is recognised as being patentable by the BPTO, which is a constitutional guarantee, because a reply to an office action has not been submitted.

Although fundamental rights without legal reserves may be restricted, such limitation, which aims to protect or preserve another constitutional value, must be established within proportionality.

It must not be forgotten, as asserted by HELENILSON CUNHA PONTES[20], that “whenever there is the possibility of imposing a less severe measure on the legal sphere of the infringing individual, the effect of which is similar to that resulting from the application of a more limiting sanction, the State should choose for the first, due to the principle of proportionality in its necessity aspect ”.

Finally, as the unconstitutionality is recognized by the Supreme Court, perhaps it is prudent, in line with the principle of legal certainty, to modulate the temporal effects of this unconstitutionality based on Article 27[21] of Law 9,868/1999, which regulates the processing of direct actions of unconstitutionality and constitutionality.

6. the Brazilian IP Law system goes against the principle of efficiency

The Brazilian IP Law allows the examination of a patent application for an unpatentable invention to proceed in the event of failure to reply to an unfavourable opinion, however it imposes the definitive lapse of a patent application for a patentable invention in the event of failure to reply to an office action.

This Brazilian IP Law system compromises the performance of the BPTO since the Institute:

?  needs to devote additional efforts to examining a patent application claiming an invention that is not patentable, which ends up contributing to an increase in the backlog (that is, the number of patent applications awaiting the start and completion of the substantive examination); and

?  is obliged to deny patent protection to an invention that it held to be patentable.

The disproportionate difference that exists in the Brazilian IP Law does not produce the effect desired by society – namely, to promote the social, technological and economic development of Brazil – so that it also affronts the principle of efficiency (Article 37, heading[22], of the CRFB/1988 and Article 2, heading[23], of the Law on Administrative Procedure – Law No. 9,784/1999).

On this principle, which must be understood in the sense that the activities of the Public Administration must produce results that satisfy the needs of society, some important doctrinal teachings should be transcribed:

ALEXANDRE DE MORAES[24]

Thus, the principle of efficiency is one that imposes on the direct and indirect Public Administration and its agents the pursuit of the common good, through the exercise of their powers in an impartial, neutral, transparent, participatory and effective way, without bureaucracy and always in search of quality, striving for the adoption of the legal and moral criteria necessary for the best possible use of public funds, in order to avoid waste and guarantee greater social profitability. It should be noted that it is not a question of the enshrinement of technocracy, quite the contrary, the principle of efficiency is intended for the greater reason and purpose of the State, the provision of essential social services for the population, aiming at the adoption of all possible legal and moral means to satisfy the common good.

MATHEUS CARVALHO[25]

This principle [of efficiency] became expressed with the advent of Constitutional Amendment [EC] 19/98. Efficiency is to produce well, with quality and less expensively. Efficient performance of administrative activity is that performed promptly and, above all, good functional performance. Better practical results and less waste are always sought in state activities, since the entire community benefits from this. (…)

Finally, an efficient provision of services must guarantee a speedy solution to disputes, which is why efficiency is directly linked to the principle of speed in administrative proceedings, inserted into the Constitution of the Republic, in Article 5, LXXVIII, which sets forth that “all, in the judicial and administrative spheres, are guaranteed the reasonable duration of the process and the means to guarantee swiftness in its processing”.

In short, the Brazilian IP Law, upon determining the continuation of the examination of patent applications on failure to reply to an unfavourable opinion (issued when the invention is not patentable) and the definitive lapse of a patent application in the event of failure to reply to an office action (issued when the invention is patentable and there is an irregularity the can be remedied in the patent application), does not afford satisfactory results, offending the principle of efficiency.

7. Conclusion

The consequence of not replying to an office action (order 6.1) – issued by the BPTO when the invention is patentable, but the patent application contains an irregularity that can be remedied – is disproportionately more serious than that resulting from not replying to an unfavourable opinion (order 7.1) – issued when the BPTO holds that the invention is not patentable.

Disproportionate because the failure to reply to an office action results in definitive lapse (Article 36, §1, of the Brazilian IP Law) and, therefore, a denial of the constitutional guarantee of obtaining patent protection for a patentable invention, whereas, upon failure to reply to an unfavourable opinion, the examination of the patent application claiming a non-patentable invention continues according to the BPTO (Article 36, §2, of the Brazilian IP Law).

This denial takes place because it is not possible file an administrative appeal against such lapse decision (Article 212, §2, of the Brazilian IP Law), as well as there being a unique and ultimate opportunity to obtain patent protection for an invention due to the requirement of novelty (Articles 8 together with 11, heading, of the Brazilian IP Law).

Thus, the criterion adopted by paragraph 1 of Article 36 of the Brazilian IP Law is manifestly inappropriate (it does not promote the constitutional guarantee of obtaining patent protection for an invention), unnecessary (there is another measure that restricts this fundamental right to a lesser extent) and/or disproportionate in a strict sense (it engenders more harm than good) so that this legal provision is harmful to the constitutional principle of proportionality and, therefore, unconstitutional.

On this issue, it cannot be forgotten that a patent is an important instrument for the social interest and the technological and economic development of any country, which is why not respecting the patent system would be retrocession.

Finally, the Brazilian IP Law system in question, upon compromising the good performance of the BPTO, violates the principle of efficiency (Article 37, heading, of the CRFB/1988 and Article 2, heading, of the Law on Administrative Procedure).

Bibliography

BARBOSA, Denis Borges. Uma Introdução À Propriedade Intelectual [An Introduction to Intellectual Property]. 2nd Reviewed and Update Edtiion. Rio de Janeiro: Lumen Juris, 2003.

BARROSO, Luís Roberto; BARCELLOS, Ana Paula de. O começo da história. A nova interpretação constitucional e o papel dos princípios no direito brasileiro [The beginning of the story. A new constitutional interpretation and the role of principles in Brazilian law] Rio de Janeiro State Magistracy School Journal, Rio de Janeiro, v. 23, n. 6, pages 25-65, July 2003.

CARVALHO, Matheus. Manual de direito administrativo [Manual for administrative law] – Manual for administrative law] – 4th reviewed, expanded and updated edition – Salvador: JusPODIVM, 2017

CERQUEIRA, João Gama. Tratado da Propriedade Industrial [Work on Industrial Property]: Volume 1. 2nd edition. Rio de Janeiro: Forense, 1946, p. 208.

Comentários à lei da propriedade industrial [Comments on the industrial property law]. IDS-Dannemann Siemsen Institute for Legal and Technical Studies. 3rd reviewed and updated edition. Rio de Janeiro: Renovar, 2013.

DI PIETRO, Maria S. Zanella. Direito Administrativo [Administrative Law]. 27th edition. São Paulo: Atlas 2014.

FILHO, Willis Santiago Guerra. Sobre o princípio da proporcionalidade [On the principle of proportionality]. In LEITE, George Salomão (Coord.). dos princípios constitucionais: Considerações em torno das normas principiológicas da Constituição [on the constitutional principles: Considerations on the principle-rules of the Constitution]. São Paulo: Método. 2008

MARMELSTEIN, George. Curso de Direitos Fundamentais [Course on Fundamental Rights]. São Paulo: Publisher Atlas, 2008.

MENDES, Gilmar Ferreira and BRANCO, Paulo Gustavo Gonet. Curso de Direito Constitucional [Course on Constitutional Law]. 7th Edition São Paulo: Publisher Saraiva. 2012.

MORAES, Alexandre de. Direito constitucional [Constitutional Law]. – 33rd edition reviewed and updated until EC no. 95, of December 15, 2016 – São Paulo: Atlas, 2017.

NADER, Paulo. Introdução ao Estudo do Direito [Introduction to the Study of Law]. 39th edition. Rio de Janeiro: Forense, 2017, page 174.

NETO, Cláudio Pereira de Souza e Sarmento, Daniel. Direito Constitucional. Teoria, História e Métodos de Trabalho [Constitutional Law. Theory, History and Methods of Working]. 2nd edition Belo Horizonte: Publisher Forum, 2014

PONTES, Helenilson Cunha. O Princípio da Proporcionalidade e o Direito Tributário [The Principle of Proportionality and Tax Law], pages 141/143, item no. 2.3, 2000, Dialética

 


[1] XXIX – the law will ensure authors of industrial inventions a temporary privilege for their use, as well as protection of industrial creations, ownership of trademarks, company names and other distinctive signs, in view of the social interest and the technological and economic development of the country;

[2] Article 8 An invention is patentable if it meets the requirements of novelty, inventive step, and industrial application.

[3] Article 11 An invention and a utility model are deemed to be novel if they are not contained in the prior art.

§1 The prior art consists of everything that became accessible to the public prior to the filing date of the patent application, by means of a written or oral description, by use or by any other means, in Brazil or abroad, except as set forth in Articles 12, 16, and 17.

§2 For the purposes of ascertaining novelty, the entire content of an application filed in Brazil, and not yet published, will be considered prior art from the filing date or claimed priority date, provided that it comes to be published, even if subsequently.

§3 The provisions of the preceding Paragraph will apply to an international patent application filed according to a treaty or convention in force in Brazil, provided that it is processed nationally.

[4] Article 35. At the time of the technical examination, a search report and opinion will be prepared on:

I – the patentability of the application;

II – the compatibility of the application with the nature claimed;

III – reformulation of the application or division; or

IV – technical office actions.

[5] BARBOSA, Denis Borges. Uma Introdução À Propriedade Intelectual [An Introduction to Intellectual Property]. 2. Edition Reviewed and Updated. Rio de Janeiro: Lumen Juris, 2003.

[6] BARROSO, Luís Roberto; BARCELLOS, Ana Paula de. O começo da história. A nova interpretação constitucional e o papel dos princípios no direito brasileiro [The beginning of the story. A new constitutional interpretation and the role of principles in Brazilian law] Rio de Janeiro State Magistracy School Journal, Rio de Janeiro, v. 23, n. 6, pages 25-65, July 2003.

[7] NADER, Paulo. Introdução ao Estudo do Direito [Introduction to the Study of Law]. 39th edition. Rio de Janeiro: Forense, 2017, page 174.

[8] FILHO, Willis Santiago Guerra. Sobre o princípio da proporcionalidade [On the principle of proportionality]. In LEITE, George Salomão (Coord.). dos princípios constitucionais: Considerações em torno das normas principiológicas da Constituição [on the constitutional principles: Considerations on the principle-rules of the Constitution]. São Paulo: Método. 2008

[9] MENDES, Gilmar Ferreira and BRANCO, Paulo Gustavo Gonet. Curso de Direito Constitucional [Course on Constitutional Law]. 7th Edition São Paulo: Publisher Saraiva. 2012.

[10] MARMELSTEIN, George. Curso de Direitos Fundamentais [Course on Fundamental Rights]. São Paulo: Publisher Atlas, 2008.

[11] § 1º If the office action is not replied to, the application will be definitively lapsed.

[12] § 2º A decision that determines the definitive lapse of a patent application or registration and that grants a patent application, certificate of addition or trademark registration is unappealable.

[13] § 2 If an office action is replied to, even if not complied with, or its formulation is contested, and if there is no expression of opinion on its patentability or compatibility, the examination will continue.

[14] Art. 212. Except if there is express provision to the contrary, decisions that this Law deals with are appealable, which will be lodged in a term of 60(sixty) days.

[15] Comentários à lei da propriedade industrial. IDS-Instituto Dannemann Siemsen de Estudos Jurídicos e Técnicos. 3ª edição revista e atualizada. Rio de Janeiro: Renovar, 2013.

[16] BARBOSA, Denis Borges. Uma Introdução À Propriedade Intelectual. 2. Edição Revista e Atualizada. Rio de Janeiro: Lumen Juris, 2003.

[17] Neto, Cláudio Pereira de Souza e Sarmento, Daniel. Direito Constitucional. Teoria, História e Métodos de Trabalho [Constitutional Law. Theory, History and Methods of Working]. 2nd edition Belo Horizonte: Publisher Forum, 2014.

[18] LXXVIII – all, in the judicial and administrative spheres, are assured a reasonable duration of the process and the means to guarantee swiftness in its processing;.

[19] DI PIETRO, Maria S. Zanella. Direito Administrativo [Administrative Law]. 27th Edition. São Paulo: Atlas 2014.

[20] PONTES, Helenilson Cunha. O Princípio da Proporcionalidade e o Direito Tributário [The Principle of Proportionality and Tax Law], page 141/143, item no. 2.3, 2000, Dialética.

[21] Article 27. Upon declaring the unconstitutionality of a law or normative ruling, and in view of arguments of legal security or exceptional social interest, the STF may, by a majority of two thirds of its members, restrict the effects of that declaration or decide that it will only be effective from when it becomes final and unappealable or any other time that may be determined.

[22] Article 37. The direct and indirect public administration of any of the Powers of the Union, the States, the Federal District and the Municipalities will obey the principles of legality, impersonality, morality, publicity and efficiency and, also, the following: (…)

[23] Article 2 The Public Administration will obey, among others, the principles of legality, purpose, motivation, reasonableness, proportionality, morality, a full defence, the adversary system, legal security, public interest and efficiency.

[24] Moraes, Alexandre de. Direito constitucional [Constitutional Law]. – 33rd edition reviewed and updated until EC no. 95, of December 15, 2016 – São Paulo: Atlas, 2017

[25] CARVALHO, Matheus. Manual de direito administrative [Manual for administrative law] – 4th reviewed, expanded and updated edition – Salvador: JusPODIVM, 2017

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Bernardo Marinho

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Lawyer and engineer. Gratuated from Federal University of Rio de Janeiro (UFRJ) - Brazil.

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