PATENTS IN BRAZIL: DECISION OF THE SUPERIOR COURT OF JUSTICE (STJ) CONSIDER INVALID AN INFRALEGAL ACT OF THE BPTO’S RESOLUTION NO. 113/2013

Patents in brazil: decision of the superior court of justice (stj) consider invalid an infralegal act of the bpto’s resolution no. 113/2013

The Brazilian Industrial Property Agents Association – ABAPI filed a Public Civil Action seeking discuss about whether it is valid or not an infralegal act of the BPTO’s Resolution No. 113/2013 was created to regulate the procedures related to the control of payment of anual fee for patentes in Brazil.

This Resolution generate disagreement because several patents and patent application have been declared irremediably forfeited due to non-payment of annuities.

The monocratic decision welcomed the request formulated by the plaintiff based on the article 87 to the Brazilian Industrial Property Law (or by the Portuguese acronym, “LPI”).

According to the rule laid down in article 87 to the Brazilian Industrial Property Law (or by the Portuguese acronym, “LPI”):

“The patent application and patent may be restored, if the applicant or patentee so requests, within 3 (three) months from the notification of the dismissal of the application or the extinguishment of the patent, upon payment of a specific fee.”.

Patents in brazil: decision of the superior court of justice (stj) consider invalid an infralegal act of the bpto’s resolution no. 113/2013
Source: migalhas.uol.com.br/

Posteriorly, the Federal Court of Appeal for the 2nd Region (TRF2) decided to dismiss the Appeal of BPTO.

On September 04, in the judgment of Special Appeal under Specific Court Regulations nº 1.837.439, The Superior Court of Justice – STJ, the highest Brazilian court for standardizing the interpretation of federal law all over the country – confirmed the understanding of the Federal Court of Appeal for the 2nd Region.

In short, the Minister Ricardo Villas Bôas Cueva understood that “While the article 87 of the LPI allows the patent holder or applicant to request the restoration, within the period of 3 (three) months from the notification, the BPTO’s resolution limits the application of institute to a requirement not foreseen in the LPI.” and concluded that the article 87 creates a new opportunity for a upon payment of a special fee, that is, creates an exception to the rule of extinction of the patent for non-payment

—

Lawyer Author of the Comment: Sheila de Souza Rodrigues

Source

Headline: Ato infralegal do INPI não pode restringir direito de restauração de patente previsto em lei

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”

Madrid Protocol implementation in BRAZIL

It is essential to ensure that adherence to the Madrid Protocol does not generate unwanted asymmetries between Brazilians and foreigners, which makes the application of the principle of non-discrimination an objective to be achieved by legislators.

In order to prepare the Brazilian system of registrations for the imminent adhesion, Bill 10.920/18  was drafted, with amendments to Law 9.279 / 96, aiming at maintaining isonomy between nationals and foreigners, without loss of competitiveness.

The main claim of the Bill is the inclusion of rules that will be followed by both Brazilians and foreigners who wish to register a trademark in Brazil. These rules are:

  1. Proof of activity compatible with the application for registration filed through the Protocol;
  2. Possibility of co-ownership of trademarks, which is currently prohibited by INPI;
  3. The possibility of filing in the “multi-class” system, in which a single application can be presented for different market segments;
  4. Publication of the application in Portuguese, for opposition purposes;
  5. Automatic approval of the application for registration if its regular examination is not completed within 18 (eighteen) months of the date of the filing;
  6. Also in requests made through the Protocol, the foreign holder must appoint a prosecutor with powers to receive court summons; and
  7. Need for declaration of use or justification of disuse during the sixth and during the last year of registration.

Currently the Bill is in the Committee on Economic Development, Industry, Commerce and Service, so that, if it deems necessary, amendments to the Project can be submitted before its judgment.

With or without the approval of Bill 10.920/18, adherence to the Madrid Protocol will generate important changes in the trademark registration process in Brazil. And our office will always be available to advise companies that wish to protect their assets in Brazil.

—

Lawyer Author of the Comment: Vittória Cariatti Lazarini
Source
Headline: A adoção do Protocolo de Madri e o Projeto de Lei 10.920/18

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”

INPI reduces wait time for new deposits

INPI released this month the preliminary activity report for 2018, and compared the results of this year with previous years.

The highlight of the report is the reduction of the stock of requests (backlog), which went from 358 thousand to 189 thousand, a decrease of 47%. This result is even more significant when we consider the 10% increase for new registration applications.

The number of administrative decisions (deferments, rejections and filings) for trademarks had a 45% increase, compared to last year. Considering this increase in the number of decisions, the waiting time to obtain the registration of a trademark, considering that it will not suffer opposition, went from 24 months to only 12 months.

In this current pace, we can expect the INPI to match international institutes time of deferment in a few years.

Lawyer Author of the Comment: Vittória Cariatti Lazarini

Source

Headline: INPI registra alta em decisões e queda em estoque de pedidos em 2018

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”

BPTO Seeks Improvement in the Patent Analysis Procedures

On May 15, 2018, it was initiated the work of an external consultancy that will evaluate the procedures involved in patent analysis by the BPTO (Brazilian Patent and Trademark Office), as well as the selection, training and evaluation mechanisms of its examiners. Such work has as goal to indicated the current issues and how they can be fixed and ways to improved the procedures of patent analysis.

In a second stage, the consultancy should be extended to improve procedures in the area of trademark analysis.

The consultancy is result of a partnership with the British Government, through the Prosperity Fund, whose objective is stimulate development and poverty reduction in several countries. The fund has 1.3 billion

pounds (about R $ 6.4 billion) in investments, being 80 million (about R $ 396 million) intended to Brazil, until 2022.

For three weeks, the consultants will work with the BPTO, collecting information and keeping in touch with examiners, managers and IP service users.

Lawyer Author of the Comment: Natália Nogueira dos Santos

Source (link)

Headline: Consultoria Externa Irá Buscar Melhoria Operacional da Área de Patentes

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”

BPTO has announced the beginning of Patent Prosecution Highway (PPH) pilot project with USPTO

On May, the BPTO announced that the Patent Prosecution Highway (PPH) pilot project with USPTO will begin its second phase, which will be initiated on May 10 until April 30, 2020. The measure was published in the BPTO Gazette nº 2470 on May 8.

The Patent Procurement Highway allows expedited examination of a patent application that has a positive patent right in another office/ member of the Institute, in addition to being associated. The pilot project came into force on February 1, 2018 in Brazil and the BTPO will accept applications for a period of two years, limited to 200 patent applications examined.

The innovation is that the information technology area is now included in the project, besides technologies already contemplated (oil, gas and petrochemical).

The current phase will also allow 50 patent applications to be included in the priority list of PPH from the preliminary opinion result obtained by the Patent Cooperation Treaty (PCT).

During the period of validity of the PPH, a total of 200 applications will be accepted in each country. The applicant may apply to join the PPH per month, except for the last 30 days of the program.

By PPH, Brazilians can use the result of the examination of the patent application in the BTPO to accelerate the analysis in the US and vice versa. Upon entering the program, INPI has issued a final decision in 180 days, on average.

Advogada Autora do Comentário: Barbara Pires

Fonte (link)

Manchete: “INPI publica nova fase do PPH com Estados Unidos”

“INPI publishes new phase of PPH with the United States”

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”