by Louis Lozouet

In our previous article on May 15, 2020, we discussed the “Brazilian Patent and Trademark Office (BRPTO) Plan To Combat Patent Backlog in Brazil“. The purpose of this article is to summarize other initiatives that the BRPTO has been implementing over the past year, in order to become more efficient and attempt to consolidate itself among the world’s leading patent offices.

We will start with some short background about Brazilian patents, which is relevant in discussing the BRPTOs more promising position in terms of the next years:

  • The exclusivity right of the patentee is guaranteed for 20 years from the filing date or 10 years after the grant of the patent, whichever is longer;
  • Expedited examination (or “fast-track” programs) is available for certain types of applicants and certain technical fields;
  • Establishment of Patent Prosecution Highway Programs (PPHs) allowing for decisions on the basis of claims already issued in other countries to obtain a granted patent in Brazil; and
  • Implementation of a plan to reduce the patent backlog by 80% by the end of 2021 and maintain an average grant time of 2-3 years.

1. Regulatory reforms that boost the economy and encourage innovation

During the past years, Brazil has implemented structural reforms aimed at boosting its economy, modernizing policies to encourage innovation and improving its Intellectual Property (IP) system.

These actions led, among other initiatives, to the recent promulgation of:

  • The Brazilian Declaration of Economic Freedom Rights (Law #13,874/19): this initiative establishes economic freedom and free market principles related to contracts, investments and property rights. The principles may be followed by Brazilian public administration and its entities, such as the BRPTO, to expedite or simplify ongoing claims.
  • A New Legal Framework on Science, Technology and Innovation (law #13,243/16 and Regulatory Decree #9,283/18, known as the “Innovation Law”): following an amendment to the Brazilian Federal Constitution (EC #85/15) the Innovation Law of 2016 substituted former law of 2004. This legislation aims to place science and technology activities, including R&D, at the core of Brazilian economic development. It aims to create a less bureaucratic legal environment that is more favorable to collaboration between public science and technology/academic Institutions and the industry/private sector.

Additionally, the Intellectual Property Inter-ministerial Group (GIPI), presided over by the Ministry of Economy, created an initiative related to the draft of the National Strategy of Intellectual Property (ENPI). The objective is to establish an effective and broadly used National System of Intellectual Property (SNPI) to stimulate innovation and access to knowledge for the benefit of everyone, and aiming to promote competition and socio-economic development.

Nevertheless, stimulating R&D to foster innovation also depends on an effective IP system.

2. BRPTO’s recent initiatives to foster innovation

Brazil has long been known for its backlog in the examination of patent applications. In addition to the implementation of the Plan to Combat the Patent Backlog (BRPTO’s Rules #240/19 and #241/10), already discussed in our previous publication, and in line with the legislative initiatives mentioned above, the BRPTO has set up several programs aimed at accelerating the patent grant procedure (known as “priority” examination procedures or “fast-track” procedures, BRPTO Rule #247/20), namely:

Applicants may request fast-track examination in the following cases:

  • Applicants (natural persons) that are more than 60 years old;
  • Applications infringed by third parties;
  • Applicants who need a granted patent to obtain funding for exploration of their inventions;
  • Applicants (natural persons) with a physical or mental disability, or carrying a serious illness;
  • Applications relating to treatment of AIDS, cancer, rare or neglected diseases;
  • Applications filed by small entities;
  • Applications filed by science and technology institutions;
  • Applications filed in Brazil that serve as priority for applications filed abroad;
  • Applications covering Green Technologies;
  • Patent applications filed by startups;
  • Patent applications covering technologies for the treatment of COVID-19 (pharmaceutical products and processes; equipment and / or health materials for the diagnosis, prophylaxis and treatment of COVID-19);
  • Applications related to “technology available on the market” (i.e., where all or part of the claimed object has been licensed, offered for sale, imported or exported, taking the Brazilian market as a reference); and
  • Applications for technology resulting from public funding (i.e., where the object claimed was the result of direct financial support resulting from public revenues, with the express purpose of its development).

The BRPTO has also set up an expedited examination procedure for applications subject to a PPH (Patent Prosecution Highway) pilot program. As of December 1st, 2019, a new PPH Pilot Program, with standardized requirements and governed by a single rule (#252/19), was implemented. The BRPTO has already signed PPHs agreements with the following Patent Offices (Japan, Argentina, Colombia, Chile, Costa Rica, Denmark, El Salvador, Ecuador, Nicaragua, Panama, Paraguay, Peru, Uruguay, Europe-EPO, United States, United Kingdom, Dominican Republic, China, Austria, Sweden and South Korea).

Additionally, the following parties may request fast track examination:

  • Third parties being accused of unduly copying the object of a patent application;
  • Third parties that hold a technology that was subsequently filed as a patent;
  • The Ministry of Health, in cases of patent applications for medicaments acquired by the National Public Health System (SUS); and
  • The State when a national emergency is declared or when there is a public interest in the examination of a given application.

In conclusion, the BRPTO has implemented a number of promising initiatives that ultimately will make it a viable candidate to consolidate itself among the world’s leading patent offices. This would be a great achievement for the efficiency and quality of the Brazilian IP system.

This article was originally published, in an extended and altered version, on August 20, 2020, as a joint initiative between Venturini IP (Co-author: Louis Lozouet) and Touroude & Associates (co-author: Jérémy Pottier).