Newsletter 41st Congress Day 4


Changes in the IP Law go hand in hand with the strengthening of the BPTO

After 25 years, the Industrial Property Law needs to be modernized and there are many articles to be revised, pointed out Judge Márcia Maria Nunes de Barros, from the 13th Federal Court of Rio de Janeiro, Professor Enzo Baiocchi, from UFRJ, and the representative of the Brazilian Ministry of Economy Felipe Augusto Machado. They spoke at the closing plenary of the congress “25 years of the Brazilian IPL and its Modernization”, also attended by the President of ABPI, Luiz Edgard Montaury Pimenta, and the Vice President, Gabriel Leonardos.

“It is clear that IP legislation needs to be improved, but it has many positive aspects that can eventually be improved”, said the judge, adding, however, that no legislative change will be beneficial without a strong BPTO. “As long as we do not empower the BPTO and invest in its autonomy, we will not have a strong IP system in Brazil”.

For the judge, several articles of the Law need to be improved, and she pointed out that the major IP issues, especially in the area of ​​patents, have already been the object of many legal discussions or are being judged. As examples, she cited the Sole Paragraph of Article 40 of the Brazilian IPL, which extends the patent’s validity period in case of BPTO’s delay; Articles 230 and 231 on pipeline patents, which were the object of a Direct Action of Unconstitutionality; and Anvisa’s (National Health and Surveillance Agency) Prior Consent, which was recently judged by the STJ (Superior Court of Justice), still without a final decision.

The magistrate concluded her presentation with the suggestion that a virtual court specializing in Intellectual Property be created. Following the model of the Justice 4.0 Centers implemented by the National Council of Justice CNJ), all processes in the IP area would converge to this instance, both relating to federal and state decisions. “I believe that this would contribute a lot to the qualification, speed, security, and strengthening of the system”, she explained.

Professor Baiocchi focused his presentation on the proposal to modernize Art.125 of the Brazilian IPL, which, he argued, “has not been showing satisfactory results”. He proposed a change in the text that contemplates the inclusion in a “clear and precise manner” of new concession requirements, the regulation of the timing of recognition of high renown, and discarded the need to grant registration for special protection. Finally, he questioned the incorporation of Article 16.3 of TRIPs which, in his view, was not implemented by Brazil.

The representative of the Brazilian Ministry of Economy addressed aspects of the Brazilian IPL but stressed that they are not finished proposals. “We do not have any concrete positioning, as we are just bringing here some points that we think could be the object of further reflection”.

Among the issues brought up is Bill 143/2019, which determines that the resources generated by the BPTO will not be subject to cost containment. On the agenda for the discussion on updating the Brazilian IPL are articles that deal with computer programs, patents created by artificial intelligence, highly renowned sound and scent marks, geographical indications, protection of detachable parts and pieces in the auto parts sector, and trade secrets.