Newsletter Edition 21 - January 2021


ABPI and the BPTO hand in hand for the future

In the year of celebrating its half a century of existence, the Brazilian Patent and Trademark Office (BPTO) is experiencing a glorious moment. There is indeed much to celebrate, both in terms of the institute’s internal work and the actual gains for the Brazilian intellectual property system. The list of achievements includes the remarkable reduction of the patent backlog and the shortening of the patent granting time – which has dropped from a frightening 13/14 years in some sectors to an acceptable level, although still high. Another milestone has been Brazil’s recent accession to the Madrid Protocol and a good implementation of this system by the institute, which is modernizing at a fast pace, aiming to be raised to the podium of the best worldwide trademark and patents offices. It is essential to include in this list the recent announcement by the government that, finally, Brazil has a National Intellectual Property Strategy, in which the BPTO has a key role. It was about time.

The Brazilian Intellectual Property Association (ABPI) allows itself to celebrate these fiftieth-century achievements with the BPTO. After all, it can be said that nourished by dialogue and perseverance, even in difficult times, ABPI, founded in 1963, and the BPTO, created by Law No. 5.648 of December 11, 1970, led the progressive maturation of intellectual property in Brazil. By the way, ABPI’s management next to the authorities had a notorious influence on the government’s technical missions to Germany, resulting in the creation of the Brazilian Patent and Trademark Office, the BPTO, replacing the extinct National Division of Industrial Property (DNPI).

Throughout the 1970s ABPI was the voice of common sense in the defense of a system to protect IP rights. This was during the Brazilian Miracle (a period of exceptional economic growth in Brazil), managed by the Brazilian military government. Through communiqués, resolutions, and hearings with the military that directed the BPTO and the government, ABPI, among other initiatives, drafted and suggested legislation for the protection of copyright to computer programs, proposed the revision in the Copyright Law, and fought for flexibility in the rules of technology transfer contracts.

ABPI criticized the imperfections of the IP system in different forums, either next to the government or the society. It positioned itself against the ban on the remittance of royalties in franchise contracts, warned about Brazil’s failure to comply with the provisions of the Paris Union Convention, of which it was one of the founders, and fought against the restriction imposed by the 1970 Code on the patenting of chemicals, pharmaceutical processes and products, food and biotechnology.

At the time, many of ABPI’s propositions to the authorities were accepted, although with great difficulties, such as Brazil’s accession, in 1977, to the Patent Cooperation Treaty (PCT). Signed in Washington in 1970, the treaty allows the application for patent protection of an invention on about 150 countries through a single International Patent Application.

At the end of the decade, with the oil crisis, inflation, and the exhaustion of the military’s import substitution model, ABPI began to point out the new paths for economic recovery and development, with technical guidance from its Study Committees, a practice that it maintains up to the present date, through documents and events, in-person and virtual. In the Public Consultation for the preparation of the National Intellectual Property Strategy, which has just been launched under the Ministry of Economy, there are several suggestions made by the Association.

In the 1980s, a lighter environment at the BPTO provided a closer relationship with ABPI. The first National Seminar on Industrial Property, held by the Association in 1980, in São Paulo, had the participation of the institute’s management. The success and enthusiasm were so great that directors of the institute guaranteed their presence at the II Seminar, which would be held the following year, in Rio de Janeiro. Today, the BPTO’s board of directors, including its president, is steadily present at the event, which is now called the International Congress on Intellectual Property, which this year reaches its 41st edition.

With the end of the cycle of military governments in 1985, and consequently the Brazilian re-democratization, Intellectual Property entered a new phase. In the 1988 Constituent Assembly, ABPI’s acting was decisive for the maintenance of intellectual and industrial property rights as stone clauses among the fundamental rights.

The liberalizing winds of the 1990s would positively impact the intellectual property system in Brazil. ABPI’s efforts influenced the revocation of Normative Act No. 15 and Resolution No. 20, which reduced BPTO’s control over technology transfer contracts. Still in that decade, ABPI had intense participation in the drafting of the Industrial Property Law (Law 9.279/1996), sometimes providing subsidies to the parliamentarians who are members of the commissions constituted in the Chambers of Deputies and in the Federal Senate, and other times attending public hearings. The result was modern and comprehensive legislation, including at an international level, which made all matters patentable.

At the BPTO, the last two decades have been marked by a rotation of presidents, who have acted within their limitations. Nevertheless, it is fair to highlight the work carried out by the recent administrations. Anvisa’s (National Health Surveillance Agency) Prior Consent, which implied a double examination for pharmaceutical products and processes and against which ABPI has always fought, was minimized with the joint BPTO/Anvisa ordinance of April 12th, 2017. With the new procedure, which ended almost two decades of legal uncertainty, Anvisa started to limit its analysis on the product or process risks to public health, allowing the BPTO to evaluate the patentability requirements and give the last word. Now the government is considering sending a Bill to Congress to definitively end the requirement of Anvisa’s Prior Consent for patents on pharmaceutical products and processes.

The elimination of the patent backlog, or at least its reduction to an acceptable level, has always been an ABPI request, but only recently has the BPTO effectively tackled the problem, and there are already encouraging results. As announced by Cláudio Furtado, the BPTO’s president, between August 2019 and the first week of December 2020, the Fight against Backlog Plan reduced 50% of the stock of patent applications, dropping from around 149 thousand to approximately 75 thousand applications.

ABPI enthusiastically monitors the ongoing actions for the modernization of the BPTO, such as the IP Digital Plan, which aims to provide greater operational and administrative efficiency to the institute’s services. There is still a lot to do in this regard, but it is feasible to imagine that the stories of both institutions will remain intertwined, intersecting, and unfolding in the timeline.

Judging by the actions of ABPI and the BPTO in the quest to improve the intellectual property system, it is reasonable to assume that the spirit of collaboration and the willingness to dialogue will continue to guide the relationship between the two entities. ABPI wishes for a strong, modern, and agile BPTO, connected to Brazil’s economic growth. To this end, it will continue to defend the financial autonomy of the institute, one of its historical flags. With the freedom to manage its budget, which is in surplus, and to apply the resources to improve its services, the BPTO will be closer to being compared to the major international trademark and patent offices. This is what Brazil needs.