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The year 2016 in Intellectual Property in Brazil: priority for trademarks and patents

In the last 12 months, we have had great news in the trademarks and patents’ sector in Brazil. The BRPTO (INPI – Instituto Nacional da Propriedade Industrial – National Institute of Industrial Property) disclosed many resolutions and guidelines that accelerate the formalities to obtain the protection of trademarks and inventions from researchers and Brazilian companies, aiming mainly the decreasing of the time of the exams and trademarks and patents of the entity. The consulting Clarke, Modet & Co., industry leader in Europe and Latin America, cite some notable changes that the country has seen about this issue in 2016.

Among these changes, we can highlight the restructuring of the BRPTO, with the intention to decrease the backlog (accumulation of pending requests for analysis). After a long period without hiring new researchers and technologists, throughout 2016 were incorporated 140 new employees, classified as 100 researchers and 40 technologists. The civil service exam that selected these professionals will have its deadline in few months. Besides hiring, the institute set the migration between sectors: the records of computer programs and topography of integrated circuit were allocated in the Patent Office, while this, the industrial design registrations were incorporated by Trademarks Management.

We still have to highlight the agreements signed throughout the year between INPI and EPO (European Patent Office), JPO (Japanese Patent Office), UKIPO (UK Intellectual Property Office), and French INPI, that aims collaborate between INPI and the other offices in several aspects, mainly related to priority examination of patent applications.

New acts to motivate the innovation

Another initiative to decrease the concession time of patents became from temporary into definitive. It is the “Programa Piloto de Patentes Verdes” (Green Patents Pilot Program— Literal Translation) created in 2012 to exam an annual quota of 500 applications for beneficial inventions to the environment. After this, the project was extended for a few more years, in 2015, the project was not renewed. In August, during the XXXVI Brazilian Congress of Intellectual Property, INPI disclosed that the resolution would be definitive, unlimited number of requests, even expiration date. Then, on IPG 2396 from December 06, 2016, the BRPTO published the resolution #175/2016, that institutes the priority examination of “Green Patent” applications.

In July, BRPTO published the Resolution#169/2016, that revised the Guidelines of Examinaiton of Patents Applications, previously published in 2013, reinforcing BRPTO’s positioning according to the previous understandings. The new standard has not brought any significant changes to the Guidelines of Exams of Patents but showed BRPTO’s intention of make public the criteria of the patent application examination.

Also in this year, an issue that was under Public Consultation was finalized. In December, it was published the Resolution 158 of Guidelines of examination of Patent Applications directed to inventions Implemented Computer Programs. This document assists the technical evaluation and establishes the understanding about what is considered innovation in this specific area.

Interface with other agencies

In 2016, BRPTO published MEMO/INPI/DIRPA/Nº 055/2016 which defines a new modus operandi of BRPTO facing the ANVISA’s interference during the prosecution of patent applications.

The referred MEMO defines that in case of patent applications for which the INPI already performed the examination, , and intend to grant the patent, ANVISA’s opinion based on public health considerations, binds the administrative act of INPI, that is, if ANVISA do not issue the prior approval based on public health criteria, the INPI should shelve the application.

However, in case the Anvisa’s technical opinion is based on patentability criteria, it doesn’t bind INPI’s administrative act, that is, the INPI will receive the issued opinions, and possible arguments and amendments presented as third parties observations to the technical examination, which may be considered or not at the moment when the application returns to INPI.

It is worthy note that the MEMO is based on conclusions of Attorney General of the Union opinion 0006-2015-AGU/PGFPFE/INPI/COOPI-LBC-1.0.

Specific standard for trademarks

To trademark areas, the news in 2016, that probably brought much more discussion among those who work in the area, was the Resolution 166/2016, published on May, 31st, 2016, establishing new standards of reservation, more known as apostille, on registration certificates. With the standardization of the apostille, the BPTO seems to exempt from evaluating about possible prohibitions on registration of the trademark, such as the prohibitions expressed in clauses II, VI, VIII, XVIII, and XXI of article 124, Law # 9.279/96. Briefly, the trademark subject to a registration granted, shall have its protection limited by the following prohibitions: (a) an isolated letter, digit or date, except when sufficiently distinctive; (b) signs of a generic, necessary, common, usual or simply descriptive character, when related to the product or service to be distinguished, or those commonly used to designate a characteristic of the product or service with respect to its nature, nationality, weight, value, quality and moment of production or of giving a service, except when presented in a sufficiently distinctive manner; (c) colours and their names, except when arranged or combined in an unusual and distinctive manner; (d) technical term used in industry, science or art, when it is related to the product or service to be distinguished ; (e) objects that are protected by industrial design registrations in the name of third parties.

The standardization of the apostille is one of the measure adopted by the BPTO, which aims to simplify the exam of trademark application, allowing the examiners achieve their goals, and consequently, minimize the backlog currently faced by the BTPO in the examination procedure. According to disclosure done by the BPTO, this change for the apostille does not modify the criteria of the exam of registrability of a trademark, and it will only benefit the user with the backlog reduction.

Without questioning the efficiency of the measure adopted by the BPTO, the fact is that many actions have been taken aiming to speed up the process of technical exams of patents, industrial design, and trademarks. The importance of backlog reduction is related with a BPTO operational process improve that, consequently, will be a great stimulus to innovation in Brazil.

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