Brazil’s government is expected soon to launch an emergency measure to eliminate the Brazilian Patent and Trademark Office’s (INPI) backlog by automatically granting 231,000 pending non-pharmaceutical applications. The proposed rules for implementing the new measure have already been made available for public comments.
The deadline for submission of comments was August 31, 2017. During recent meetings, INPI officials commented that certain proposals made by local associations add complexity to the process.
While it is still difficult to know the exact details and timing for this measure, companies may soon need to deploy a strategy with a timeframe as short as 90 days to take full advantage of the new system while minimising potential risks by both effectively using the proposed opt-out system for selected applications and filing pre-grant oppositions against competitors.
The INPI has implied that there is really no other viable option to deal with the backlog problem in the short term. The measure should cover all non-pharma related pending applications filed before the emergency measure is published and becomes effective. Considering that it is hard to foresee when this measure will be published and implemented, companies should consider entering the national phase of Patent Cooperation Treaty applications before the 30-month deadline. Likewise, Paris Convention filings should be should be made whenever possible.
Amendments to claims
The general feeling is that assuming the proposed measure comes into effect, the INPI will not accept any amendments made after an application is filed, that is, patents will be granted based on the original claim chart filed in Brazil. It is thus important to guarantee that the original claims provide adequate coverage.
One of the proposals submitted by the Brazilian Intellectual Property Association is to allow the applicant to submit claim amendments up to the time examination is requested, as this finds basis in the current patent law. Apparently, this proposal was well received by the INPI and the Ministry of Industry & Commerce.
Legality of the proposed measure
The patents and international law committees of the Brazilian Intellectual Property Association have analysed the proposed rules to determine whether they are in violation of articles 27 and 62 of the TRIPS Agreement. As is common knowledge, article 27 of TRIPS deals with requirements for patentability and the availability of patents in all technological sectors, whereas article 62 focuses on administrative proceedings for the acquisition of IP rights.
The committees’ findings are that the provisions of the proposed measure do not violate article 27 as this article merely specifies that patents should be made available in all technology fields but it does not elaborate on how the granting process should work.
On the other hand, article 62 of TRIPS provides that member countries will permit the granting or registration of rights within a reasonable period of time. Moreover, inter partes procedures, such as oppositions, revocation and cancellation, are contemplated in article 62 of TRIPS. Accordingly, the proposed rules of the INPI’s measure are deemed to be consistent with the provisions of articles 27 and 62 of TRIPS.
The opt-out clause is an important provision in the measure as the enforcement of a commercially important patent without examination reduces the likelihood of obtaining preliminary injunctive relief. There is a serious concern that objections to the validity of this measure and to the patents granted under it will be raised in the courts.
The opt-out provision allows the applicant to request the withdrawal of a given application from the automatic grant programme so that the application may undergo regular substantive examination. The recommendation therefore is to make use of the opt-out clause for important inventions as it stands to reason that since most of the pending cases would be automatically granted, the backlog should be substantially reduced.
The proposed measure provides competitors with the possibility of removing third parties’ applications from the automatic grant system by filing observations (pre-grant oppositions). This provision offers an opportunity for interested parties to target and analyse a competitor’s patent portfolio and ultimately submit observations with the objective of removing these applications from the automatic grant system. Statistics evidence that the submission of third parties’ observations in applications will deter substantially expected allowance decisions.
The proposal has its positive side in the sense that it aims to eliminate the INPI’s patent backlog—a critical and frustrating problem that has become worse over recent years. There are flaws and drawbacks in the proposed measure, and of particular concern is the rule which eliminates substantive examination. It is regrettable that owing to restrictions on financial resources, government officials did not come up with plausible alternatives to simplify the examination procedure and still ensure compliance of patentability requirements.
The general feeling is that the INPI is pushing for the enactment of the measure, but first examiners and administrative personnel at the agency must digitise more than 200,000 patent files. Only when this task is finalised will the INPI be able to realise the proposal and initiate the provisions foreseen in the measure.