The Brazilian Federal Government is modernizing the Brazilian Industrial Property System. In collaboration with national and foreign partners, the Ministry of Industry, Foreign Trade and Services and the Brazilian Industrial Development Agency (ABDI) have implemented a series of measures to become more agile and efficient in the process of analysis and grant of patents by the Brazilian Patents and Trademarks Office (BPTO). In addition to investments in infrastructure, the government will create a simplified system for patents acceptance. The expectation is to attend about 204 thousand patent applications throughout the year 2018, significantly reducing the backlog of the institution.
In the last three years, the BPTO’s productivity has grown considerably, reaching record levels. In 2017, the institute closed the year with more decisions than applications reducing the backlog of patents (7.6%), trademarks (14.9%) and industrial designs (26%).
This January, the ABDI and the BPTO signed a Cooperation Agreement to reformulate the IT infrastructure and processes to accelerate examination. The agency’s investment was over US$ 10 million.
In addition, the Prosperity Fund of the British Government has also invested in the BPTO, ensuring convergence with international practices. In addition to these Initiatives, a greater number Patent Prosecution Highway (PPHs) – recently signed with the United States, European Union, China, Japan and Prosul (Colombia, Argentina, Chile, Costa Rica, Ecuador, Peru, and Uruguay). An agreement is also being negotiated with Denmark.
* translated and adapted from ABDI’s official webpage. You can check the original publication (in Portuguese) here
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 useful in the negotiation of a license.
The second step, logically, is to study means to expedite the proceedings, without incurring in damages to the applicants. It’s true that a massive backlog is damaging enough, economically, but the improperly examination of a Patent or a Trademark can do even less for the assurance of a market.
Thus, in the many study groups that the national IP offices (and the Brazilian PTO, among them) established to find solutions for the backlogs and slow proceedings for each of their offices, they considered bilateral international agreements.
That’s the point, fortunately, that Brazil finds itself at this moment. In the last year our officials have been profusely busy negotiating PPHs (Patent Prosecution Highways) with other markets like U.S., Japan, Latin America (Argentina, Chile, Colombia, Costa Rica, Ecuador, Paraguay, Peru and Uruguay) and, soon E. U., that will allow the examinations of a Patent Application that already took place in certain IP offices to be validated in our own country with little effort – a logical unfolding of the absolute aspect of novelty as a Patent requirement.
For too much time we have been hostages of the illusion of the “sovereignty” in the examination proceeding. This element of independency has done little to correct possible mistakes by other IP offices around the world, with the serious setback of creating a backlog of almost a decade – in some cases – for the examination of a Patent.
Thus, as the PPHs start being enforced at its full strength, hopefully the backlogs will eventually clear off. The main force of the Brazilian PTO’s workers will be able to focus their capabilities in Patents first filed here in Brazil, on behalf of Brazilian inventors and companies and/or international companies that chose Brazil as a primary market for investment.
That would be a very refreshed vision of the “sovereignty” for which we all have been striving.
For more information regarding the PPHs already signed by Brazil, please access:
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 are the Patent Applications that already had the technical examination initiated by the BPTO, or the ones that had a priority for examination conceded by the BPTO or, yet, the ones that were targeted by third-party subsidies.
For more information, please contact firstname.lastname@example.org.
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, ANVISA will continue to issue prior consent over patent application for pharmaceutical product or process (article 1 of the Joint Ordinance). However, article 4 of the Joint Ordinance prescribes that ANVISA will limit its analysis to the risk of the product or process to the public health. The risk is characterized by prohibited substances in Brazil.
This procedure will be performed soon after the filing of examination request presented to the BPTO (article 2 of the Joint Ordinance).
For those cases that may have great effect or consequences on public policies for health (related, for example, on the access of certain medications), ANVISA will be capable to offer subsidies for BPTO Examination. Therefore, ANVISA cannot interfere in the analysis of patentability requirements.
The BPTO, in turn, will evaluate the patentability requirements. This Joint Ordinance is already in effect and, by force of its article 8, will affect all current patent application still pending, even the ones already examined by ANVISA.
Our office and our attorneys act before the BPTO and the ANVISA. We will be able to enforce the new Join Ordinance on benefit of your clients.
If you are interested in finding more about this Join Ordinance or the measures that can be taken to expedite your client’s patent applications in the pharmaceutical field in Brazil, please contact us at email@example.com
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 between the two countries.
For this project, the BPTO will accept only patent applications related to Information Technology – a fast paced field that demands quick analysis. In its turn, Japan will accept patent applications for any field.
The IPC classifications included in the program will be disclosed soon, with the resolution that will be issued by the BPTO and will regulate the PPH project in Brazil.
For more information, please contact our technical team at the following email contact: firstname.lastname@example.org
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 turn, will evaluate the patentability requirements.
This proposition was approved by ANVISA on March 14, 2017 and we are waiting for the official publication of this decision, in order for it to take immediate effect.
Therefore, rest assured that we will keep you informed about the specifics of this new development and the evolution of its impact on the processing of pharmaceutical patent applications in our care in Brazil.