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The Future of IP

It has become emblematic, in the first decades of the XXI century and with the gradual growth of the demand for services in Intellectual Property before the national IP offices, the initiative from many governments and international institutions to find means for the reduction of backlogs and the time spent by the applicant in obtaining a Letter Patent or a Certificate of Registration. The first step in this painful process is to first recognize, in a national level, that a country that aims to be recognized as a strategic market cannot take a decade or so to grant a document to an applicant that will give him exclusive right over an IP asset; mostly because the expectation of rights (for the Patent, at least) usually is not enough to convince investors or other economical agents that may be interested in the asset. For the trademark, it’s even worse: only a Certificate is really…

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The Brazilian PTO (BPTO) issues Rule #193/2017 on expedited analysis of patent applications filed under the PCT

Recognizing a huge work backlog in the examination of Patent Applications (and expecting an increase of Patent Applications this year), the Brazilian Trademark and Patent Office (BPTO) issued on June 7th, 2017 the Official Resolution No. 193, to help solving the work backlog issue. This procedure aims to expedite the examination of applications by increasing the examiners’ productivity. This Resolution is directly related to PCT, and it defines that after June 13th, 2017 (i.e., last Tuesday) the search report for the applications coming from offices that work as International Searching and International Preliminary Examining Authorities under the PCT (ISA and IPEA) will be elaborated through the incorporation of the search performed by the respective office (directly related to the claimed priority. Also, the documents that are the result of search from other offices (ISR) may be, from now on, directly incorporated to the search report. Exceptions to this new development…

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Signed a New Agreement for the Examination of Pharmaceutical Patent Applications in Brazil

Yesterday (04/12/2017), in a formal ceremony held in Palácio do Planalto, in the capital Brasília, it was signed the much anticipated agreement between the Brazilian Patent and Trademark Office (BPTO) and the National Health Surveillance Agency (ANVISA) regarding the examination of pharmaceutical patent applications. In addition to expediting the processing and examination of patents in the pharmaceutical field, this will put an end to many lawsuits that exists over this issue. This will convert in benefits to Brazil, since this new found stability can attract investors to the field. Also, a final decision over certain patent applications can encourage companies to increase the production of certain products, generating more offers of pharmaceutical products in the Brazilian market. The agreement signed yesterday was published also yesterday as a Joint Ordinance No. 1, with full effect on both entities proceedings. The main aspects of such agreement is summarized below. As currently required by Article 229-C,…

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A new Patent Prosecution Highway (PPH) was signed!

On this March 16th, 2017, the president of the Brazilian Patent and Trademark Office (BPTO), Mr. Luiz Otávio Pimentel, and the president of the Japan Patent Office (JPO), Mr. Yoshinori Komiya, have signed in São Paulo a Joint Declaration to formalize a project of Patent Prosecution Highway (PPH) between the two countries. This PPH has been studied by a work group since October of the last year and the agreement was signed yesterday, during the Seminar on Cooperation in Intellectual Property between Brazil and Japan. By the PPH, Brazilians will be able to use the result of the examination of the BPTO over their patent applications in order to speed up the analysis in Japan, and vice versa. In this phase of the project (which starts on the first day of April of this year and will last for 2 years) there will be accepted, at maximum, 200 patent applications for the PPH…

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New Developments in the Examination of Pharmaceutical Patent Applications

The Brazilian Patent and Trademark Office (BPTO) and the National Health Surveillance Agency (ANVISA) have recently advanced in the discussion regarding the examination of pharmaceutical patent applications. Due the Article 229-C of Brazilian IP Law, whenever a patent application claims a pharmaceutical product or process, consent from the National Sanitary Surveillance Agency (ANVISA) is required prior to the granting of the desired patent by the BPTO. However, ANVISA’s lack technical capability to analyze patentability requirements of pharmaceutical patent applications, and this conflict over the responsibilities of the two entities in the patent application process have generated a backlog in the BPTO’s work of analysis of patents in this field of technology. Hence, the new proposal clarifies the responsibility of each entity in the process of analysis of pharmaceutical patent applications: ANVISA will continue to issue prior consent declarations, limiting its analysis to the risk of the product or process to the public health and the BPTO, in…

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Ethics and Intellectual Property

When we study the principle of ethics in Intellectual Property, we have two classic situations to be observed: the first (and best known) is the reproduction or imitation of trademarks and / or the involvement of patents between competing companies (i.e., acts of unfair competition between companies owning intellectual property as their main assets) and the second is the one that involves competing offices that provide assistance services to holders of intellectual property rights, which, sometimes, may claim some ethical breach of the other in dealing with clients. In this setting, the second aspect has an even broader competitive importance (of ethical consideration in its origin), since it involves from the effective onset of the knowledge and the accomplishment of the acts in relation to the practice of the law or the profession of industrial property agent, including even those who do not have such qualifications (whether due to the…

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New Guidelines for the Examination of Computer-implemented Inventions

We would like to bring to our readers’ attention that the BPTO published on December 6, 2016 the Resolution 158/2016, which comprises guidelines for the examination procedure regarding patent applications claiming computer-implemented inventions. The aim of this publication is to give more transparency to the examination process and also to make possible to know more accurately on how to request and claim this inventions. This resolution provides definitions and the necessary structure for patent applications that are implemented by computer giving the possibilities to not incur in the article 10(V), which describes those matters that cannot be considered as inventions. We make reference to this publication to inform our clients that all the matters related to this kind of technologies will be treated taking into consideration these rules in order to provide goods results for the grant of the patent. If you would like to know more information about this new…

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Brazil and Japan new agreement – A new Patent Prosecution Highway (PPH) is near!

We are pleased to announce that today Brazil and Japan have signed an agreement that creates a work group to study forms of cooperation in patent examinations between the two countries, and it could mean a Patent Prosecution Highway (PPH) in the near future. This is a new important step, since a PPH Pilot Program between the USPTO and the BRPTO is already in course since January of this year. The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating intellectual property offices. Under PPH, participating patent offices agree that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. PPH leverages fast-track examination procedures already in place among participating patent offices to…