In the dynamic, globalized world where knowledge is a pivotal economic driver, understanding the intricacies of patent laws is crucial for businesses. This article provides a detailed overview of patents in Brazil, offering insights into both patent prosecution and litigation processes, with a focus on some unique aspects of the Brazilian patent system.
In this article you will see:
- Overview of Patents in Brazil
- Patents Search in Brazil
- Patent Term in Brazil
- Patent Prosecution in Brazil
- Patent Prosecution Highway in Brazil
- Brazil Patent Maintenance Fees
- Conclusion
Overview of Patents in Brazil
Introduction to Patents in Brazil
Brazil has a vibrant and growing market that actively engages with both the creation and utilization of patents. The Brazilian Patent and Trademark Office (INPI) is responsible for the regulation and issuance of patents. The country has developed a set of laws and practices that are designed to protect and encourage innovation, while also ensuring that new technologies are accessible and beneficial to society at large.
Significance of Patents
Patents are crucial tools that provide patentees with the exclusive rights to their inventions, fostering an environment that encourages innovation and technological advancement. In Brazil, companies across various sectors extensively use patents as strategic assets for various competitive activities, including the development of new technologies, monitoring competitors, identifying technological trends.
History and Evolution of Patent Laws in Brazil
Brazil’s patent laws have evolved over time to meet the changing needs of its economy and society. The country has made significant efforts to align its patent system with international standards, adopting many of the practices and principles outlined in international agreements such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and becoming a contracting state of the Patent Cooperation Treaty (PCT).
Currently, Brazil is undergoing a process of modernization of its IP law, with the Interministerial Group for Intellectual Property (GIPI) announcing a public consultation to discuss potential changes to the Brazilian IP practice. This initiative aims to bring the existing IP law up to date with recent technological advances and global trends.
Patent Search in Brazil
Importance of Conducting a Patent Search
Conducting a patent search is an important step and highly recommended in the process of obtaining a patent in Brazil. A thorough search enables the applicants to ascertain the patentability of their invention and obtain a clear understanding of the existing patents and pending applications that might be similar to their own. This process is vital to avoid unnecessary expenditures of time and resources on inventions that do not have a patentability potential, verifying design around possibilities, assessing applicable invalidity procedures to annul a patent of interest, prospecting licensing agreements, redesigning patent strategies in Brazil, and helping companies navigate the patent application process and the Brazilian market more efficiently.
Platforms and Tools for Patent Search
The INPI provides a web-based search tool that allows users to access, granted, rejected, extinct or shelved patents, and pending applications. This database is an invaluable resource for applicants looking to understand the landscape of existing patents in their field in Brazil. Additionally, there are free and private databases that can be accessed online, providing a broader view of the global patent environment.
Guide to Conducting a Patent Search
For those unfamiliar with the patent search process, the INPI offers practical guides that outline the step-by-step procedures for conducting searches on their database and on . These guides are designed to assist individuals in effectively navigating through the vast amount of information available, enabling them to conduct patent searches that are both thorough and accurate.
Patent Term in Brazil
Understanding Patent Terms in Brazil
The patent term extension in Brazil depends on the nature of the patent. Invention patents are valid for 20 years from the filing date, while utility model patents are valid for 15 years from the filing date.
In the past, invention patents could be granted for 10 years counted from the date of grant (instead of 20 years counted from filing) whenever prosecution took longer than 10 years as a way to compensate patentees for INPI delays. However, in 2021, the Brazilian Supreme Court outlawed this provision from the statute, since it was considered incompatible with the Brazilian Constitution. Since then, many companies in the pharmaceutical field have been litigating against INPI to seek Patent Term Adjustment (PTA).
In those PTA lawsuits, plaintiffs argue either a normative gap in Brazilian law, suggesting the application of foreign law and customs, or rely on the Federal Administrative Procedure Statute, which emphasizes efficiency and compensation for losses due to administrative delays. Some patentees were able to obtain preliminary injunctive relief to prevent their patents from expiring early.
Practical Implications
- Monitoring Developments: Keeping abreast of ongoing legal decisions and their implications is crucial for adjusting patent strategies in Brazil.
- Potential for Compensation: Depending on the outcomes of these legal battles, there may be opportunities for compensation or term extensions for patents affected by administrative delays.
Expert Advice
- Consult with Specialists: Engage with legal experts who specialize in Brazilian patent law to navigate these complexities.
- Prepare for Various Outcomes: Develop strategies that account for different legal scenarios regarding patent term adjustments.
Patent Prosecution in Brazil
The Patent Prosecution Process
The patent prosecution process in Brazil, managed by the INPI, involves several stages, from filing to grant. The average time for patent prosecution in Brazil is currently around five years, though this can vary based on the complexity of the patent and the field of technology. It is worth mentioning that at the moment the INPI is working to reduce this average time for granting a patent to two years, as well as they provide several possibilities for the applicants to request accelerated examination of the case.
Key Stages and Timeframes
- Filing and Formal Examination: The initial filing is followed by a formal examination, which typically takes a few months.
- Substantive Examination: At this stage, the patentability requirements and conditions (novelty, inventiveness, accuracy, sufficiency of disclosure, among others) are assessed by the INPI. In order to put the patent application in a position to receive a grant decision, the INPI can issue written opinions (generally ranging from 1 to 3), and this whole process usually takes on average around 5 years.
patents prosecution in brazil
Tips for Efficient Prosecution
- Filing documentation: Prepare all necessary documents in advance to avoid formal objections and/or late filing fees.
- Examination request: In Brazil, there are some strict rules on filing claim amendments and divisional applications after requesting the examination. Consider these before requesting the examination.
- Responsive Strategy: Respond promptly and thoroughly to written opinions to avoid unnecessary delays.
- Utilize Acceleration Programs: Consider using acceleration programs like the Patent Prosecution Highway (PPH) for eligible patents to expedite the process.
Patent Prosecution Highway in Brazil
Overview of PPH in Brazil
The PPH is a program resulting from international agreements between several patent offices. It accelerates the prosecution of Brazilian patent applications containing a member of its patent family that has already been examined in other countries with which the INPI has a PPH agreement (such as EPO, USPTO, JPO, KIPO, SIPO). This program covers various technology sectors, and the average time to grant under the PPH program can be significantly reduced, often within a year of entering the program.
Types of Technology Covered and Timeframes
- Technology Coverage: The PPH in Brazil is technology-neutral, meaning it covers a wide range of technological fields.
- Average Timeframes: On average, patents under the PPH program can be processed within 12 to 18 months, a significant reduction compared to the standard prosecution timeline.
Utilizing PPH Effectively
- Eligibility Check: Ensure your patent application is eligible for the PPH program based on prior positive technical examination in other jurisdictions.
- Strategic Filing: Coordinate your patent filing strategies across different jurisdictions to leverage the benefits of the PPH program.
- International Agreements: Brazil has renewed its PPH agreement with several Intellectual Property Offices, including South Korea, the United States, Japan, and the European Patent Office, facilitating patent protection and technological innovation among these nations.
Brazil Patent Maintenance Fees
In Brazil, the process of filing and maintaining patents involves various fees that applicants should be aware of. These fees are structured to cover the costs associated with the examination, maintenance, and other administrative processes handled by the INPI. Understanding the fee structure is important for applicants to budget effectively for their patent applications. Nonetheless, the official fees in Brazil are not high, especially when compared to USPTO and EPO official fees.
Calculating the cost to file and maintain a patent in Brazil is not that simple, since there are several variables involved in any specific case. More information can be found on the INPI website where the office sets out the details regarding service fees. If you need help calculating the fees involved in your particular case, do not hesitate to contact our patent experts.
Applicants should note that, if they do hire a local representative to help with the prosecution process, costs will increase. However, it is not recommended that applicants engage in the process without the support of a local patent expert, as this may lead to errors and future issues related to the holders’ rights.
Conclusion
Understanding the patent landscape in Brazil is crucial for those looking to protect and leverage their innovation in this dynamic market. From conducting effective and strategic patent searches to navigating the prosecution process, applicants must be well assisted, in the various aspects of Brazil’s patent system to secure and maintain their patents successfully. With a robust legal framework and a commitment to fostering innovation, Brazil offers significant opportunities for patentees in the realm of patents. Engaging with experienced professionals and legal advisors, like our team at Daniel Law, can provide invaluable support in navigating patents safety in Brazil, ensuring that your intellectual property is protected and leveraged effectively.