Newsletter Edition 35 - April 2022


ABPI receives a favorable ruling in court in appeal for resources for the BPTO

In a sentence delivered on April 12, within the scope of the Structuring Civil Action filed by ABPI, Judge Caroline Tauk, of the 31st Federal Court of Rio de Janeiro condemned the Union to provide the BPTO – Brazilian Patent and Trademark Office – with the necessary resources for the proper functioning of the institute. In her decision, which is subject to appeal, the Judge says: “The Union must be ordered to remedy the existing structural nonconformity in the Brazilian system for the protection of industrial property, through the transfer to the BPTO of the budgetary resources necessary for the execution of the planning approved by the Court, observing the respective schedule”.

The court decision is in line with an old ABPI banner. The entity has defended the financial autonomy of the BPTO, which, for decades, has not received from the Federal Government the minimally adequate resources to carry out its activities of examination and granting of patent and trademark rights. According to data from the BPTO, the amounts collected by the autarchy in 2021 totaled R$ 432.2 million for services provision and R$ 82.4 million as equity income, which went to the National Treasury’s single account. Of these amounts, approximately R$ 67.2 million were allocated to the BPTO in 2021 for discretionary expenses, which corresponded to just over 10% of what the institute collected that year. The result of the budgetary constraint is the excessive time for analyzing patent applications, which far exceeds the minimum acceptable time and that of patent offices in other countries.

In her sentence, which partially upheld the terms of the Action filed by ABPI (proc. nº 5095710-55.2021.4.02.5101/RJ), the judge also ordered the BPTO to “present, within 90 days, an updated and detailed diagnosis report concerning the institute’s operation, identifying ineffectiveness and inefficiency points, based on technical and comparative parameters, as well as material, budgetary and functional needs to improve its activities”; and, within the same period, to present the “measures to be progressively taken to improve its activities and detailed planning for said measures, as well as its respective budget forecast. The plan should cover the years 2022, 2023, and 2024 and be specific as to the actions to be carried out, the means of execution, deadlines, and funding sources and will be subject to analysis and approval in the sentence compliance phase, in the form of reasoning (…)”.

Represented by lawyers Gustavo Osna and Marcelo Mazzola, the lawsuit was based, among others, on the declaration of unconstitutionality, by the Federal Supreme Court – STF, of the sole paragraph of art. 40 of the Industrial Property Law (ADI – Direct Action of Unconstitutionality – 5,529). The rule in question offered minimal protection to the patent applicant before the notorious administrative delay of the BPTO. For ABPI, in this context, a state of nonconformity was institutionalized, also recognized in the judgment of the ADI 5,529, reported by Minister Dias Toffoli. At the origin of this nonconformity, there is the reallocation, in favor of the National Treasury, of the revenue from the BPTO services execution, which is not destined for the institute. He argues that it is worth remembering that the amount collected by the BPTO activities is not a fee or tax but a simple price paid by the service user, as unanimously decided by the Plenary of the STF in 2018, in ADI 3,863.