Regulations of software patents in Brazil

In August 2020, The Brazilian Trademark and Patent office (INPI) created a guideline stating rules for the examination of patent implemented through software.  The guideline was published for a public consultation and suggestions by interested parties. 

After reviewing the suggestions, INPI issued a final guideline that will be used for examination of software related patents in Brazil. 

It is important to mention that as the software-related patents are based on a process, so it only can be registered as an invention patent and have to comply with the requirements established on the Brazilian law. 

Moreover, the Brazilian law does not allow a patent of a software itself.

It is mandatory the relation with a device, so the product can be patented or the device functionality. 

Peduti Advogados has patent attorney specialized on patent matters, if you have any question regarding a software-related patent and the requirements feel free to contact us.

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Lawyer Author of the Comment: Laila dos Reis Araujo

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“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.”

The number of priority patent examination in Brazil has increased

The number of priority patent examination in Brazil has increased

There are several options to request a priority patent examination before the Brazilian Patent and Trademark Office (INPI). 

Recently, INPI released a report showing that the number of priority examinations has increased during this year.  

The number of priority patent examination in Brazil has increased

One of the possibilities is when the patent application is related to pharmaceutical products, processes and equipment and / or materials for use in health, for the diagnosis or treatment of COVID-19. It is also possible to request if a third party is infringing your product/process, if the owner is a startup. 

INPI has a project called Patent Prosecution Highway in partnership with different countries. Through this project, it is possible to use the search from other offices to exam the patent in Brazil.

Feel free to contact our attorneys if you want to know more about options to request for priority in a patent application. 

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Lawyer Author of the Comment: Laila dos Reis Araujo

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“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.”

Trade dress infringement lawsuit in Brazil requires expert examination

Trade dress is the characteristics of the visual appearance of a product or service. It consists of all the elements, such as the shape, design, colors, that are used to “package” the product or service and make it distinct, identifying the goods, as trademark does. A package of a product can have a specific trade dress, but also a chain of fast-food restaurant does.

Although Brazilian law does not have specific protection of trade dress, neither a mechanism for registering the trade dress, it can be protected by the Brazilian Industrial Property Law (Law # 9279/96) under the repression of unfair competition.

Companies that have their trade dress violated by others can file a lawsuit to refrain the offender from violating the trade dress of its products or serves and claim material and moral damages.

Since trade dress involves a series of unlimited elements than can make a product or service distinct, this type claim requires an expert examination to analyze if the defendant use of similar elements constitute a trade dress violation and unfair competition.

This is the understanding of Brazilian Superior Court of Justice. On an important trial in February 2019 the Superior Court of Justice established that trade dress violation claims requires examination from experts to evaluate market aspects, consumer habits, marketing technics, the degree of attention of consumers on specific market niches as well as the elements used to present the product or service.

In the case law, Superior Court of Justice annulled a sentence that has denied the expert examination request and analyzed the case by merely comparing photographs. 

This is and important precedent of trade dress infringement lawsuits in Brazil and has settled a relevant understanding on how this kind of lawsuit must be handled.

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Lawyer Author of the Comment: Pedro Eurico de Souza Cruz Teixeira

“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.”

Brazilian Trademark and Patent Office will issue a guideline for patents implemented through software

The Brazilian Trademark and Patent Office (INPI) has strict guidelines to exam inventions implemented through software. A Patent related to a software usually has algorithms that are a kind of methods to solve problems.

The Brazilian law states that certain methods cannot be granted as patents. These methods are: mathematical methods, methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature; computer programmes per se; operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body.

So, if the examiner understands that the algorithm or the software are one of the methods listed above, the Patent is not granted.


Considering that patents related to software are becoming more common, INPI created a guideline exclusively to inventions implemented through software. The guideline was published for a public consultation and suggestions by interested parties.

After that, INPI will analyses the suggestion and publish a resolution with the guideline.

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Lawyer Author of the Comment: Laila dos Reis Araujo

“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.”

Brazil reduces the patent examination backlog

patent examination backlog

As we have mentioned before, the Brazilian Trademark and Patent office (INPI) launched last year a plan to reduce the backlog of patent examination. 

Recently, INPI released a report showing the results. From January to June 2020, INPI examined 20.675 patent applications around 51,6% of the estimate to 2020 and 87.6% of all the examination in 2019 (23.592 examinations). 

patent examination backlog

The timeframe of the technical priority examination was also reduced from 18 months in 2019 to 13.4 months in 2020.

At the future, INPI expects to take around 04 years to conclude patent examinations in Brazil.

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Lawyer Author of the Comment: Laila dos Reis Araujo

Source

Headline: Brazil reduces the patent examination backlog

“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.”

The Brazilian trademark and patent office is making changes in order to improve the trademark system

The Patent office has published a resolution this week with new rules for examination of patents. The examiner will be allowed to use the  searches already carried out by another Patent Office in cases of patents filed in Brazil through PCT or CUP. 

The examiner will issue an office action requesting the applicant to talk about the cited documents and  make adjustments if necessary. After that the examiner will decide about granting the patent or not. 

Implementing these changes the Patent office expects that the backlog will be reduced in 80% until 2021. After that they believe that the timeframe for examining patents would take around 02 years. 

In order to implement the Madrid Protocol the Trademark office is also making changes on the system. The trademarks used to take around 3 years to be granted, now the applications are being examined in around 01 year.  

The Senate has approved the adhesion of Brazil in Madrid Protocol. From October 02, 2019 it will be possible to file trademarks in Brazil through Madrid Protocol. 

In Brazil is not possible to file multiclass applications but probably it will be possible next year. 

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Lawyer Author of the Comment: Laila dos Reis Araujo

“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.”