Newsletter Edition 47 - May 2023


GIPI Technical Dialogues seeks to increase the number of patents in Brazil

In May, ABPI hosted the webinar “GIPI Technical Dialogues,” an event that showcased the significant involvement of ABPI – Brazilian Intellectual Property Association – in the 13 subgroups of GIPI (Interministerial Group on Intellectual Property). These subgroups presented proposals to support the Brazilian National Intellectual Property Strategy (ENPI) and update the Brazilian intellectual property system and legislation. The meetings took place between August and December of the previous year. To facilitate engagement from interested parties, ABPI divided the event into two mornings.

On the first day of the event, Gabriel Leonardos, President of ABPI, highlighted that one of the central objectives of the ENPI – National Intellectual Property Strategy is to increase the number of patents in the country. In 2013, there were 34,050 patent applications, but last year it decreased to 27,139 applications. Leonardos expressed, “Unfortunately, in this regard, we have fallen behind while the rest of the world has moved forward.”

During the closing ceremony on May 30th, Leonardos paid tribute to the officials from the Brazilian Ministry of Development, Industry, Commerce and Services who were involved in the work, recognizing their “republican spirit and genuine ability to listen to organized society.”

Dialogues Part I – 05/23

On the first day of the “Technical Dialogues,” held on May 23rd, proposals were presented regarding patenting in the biotechnology field, amendments and divisions of patent applications, contracts, essential patents, and other provisions of the Brazilian Industrial Property Law (Law 9,279/96).

During the presentation of the working group that addressed the amendment of patents in the biotechnology field, Viviane Trojan, a coordinator of ABPI’s Patents Committee, clarified that no consensus was reached. The sub-group integrated by ABPI proposed changes to the wording of Article 10 of the IPL, which deals with utility models, including in this topic “non-human cells, microorganisms, and biological material from any living being, provided they are isolated from nature.” The same sub-group also proposed new wording for item 9.1.1 of Resolution 208/2017 regarding medical use inventions.

Regarding the group that addressed amendments and divisions of patent applications, Gabriela Salerno, also a coordinator of ABPI’s Patents Committee, explained that everyone agreed that lack of clarity in the legislation, as interpreted by the BPTO and some judicial decisions, leads to legal uncertainty. The proposals from the sub-group integrated by ABPI include changes to the wording of Article 32 and Article 26 of the IPL, allowing for amendments after examination request and expanding the possibilities of division at any time, encompassing the entire content of the originally filed application, in line with international practice.

Regarding the issue of patent validity periods and the delay in examination processes at the BPTO (Brazilian Patent and Trademark Office), the proposals were also conflicting, according to Bernardo Fontes Alexandre, a coordinator of the Patents Committee. The sub-group in which the ABPI participated pointed out that the lack of infrastructure and human resources at the BPTO was among the causes of the delay, resulting in legal uncertainty and discouragement of innovation, among other consequences. The proposals presented include the inclusion of a provision in the law to adjust the patent validity period to compensate for any delays by the BPTO.

The group discussing the low rate of patenting in Brazil found convergence, particularly regarding the fundamental cause of the problem: the limited understanding of intellectual property culture. In the presentation by Tatiana Campello, the ABPI’s 2nd Vice President, and lawyer Camila Garrote, the proposals include incorporating intellectual property into higher education curricula and updating the Innovation Law.

Regarding Technology Transfer Agreements, the issue identified in the presentation by lawyer Thereza Curi Abranches and the Deputy Coordinator of the Technology Transfer and Franchising Committee, Pablo Torquato, relates to the imposition of payment limits between companies established in Brazil and the requirement for registration/annotation at the BPTO. To address the problem, the group proposed the inclusion of an interpretative norm in Law 3,470, dated November 28, 1958. However, with the publication of Provisional Measure MP 1,152 on December 29, 2022, approved by the Senate on May 10th of the current year, the justification for the proposal no longer applies.

Regarding Standard Essential Patents (SEPs) and FRAND (fair, reasonable, and non-discriminatory) terms, the group, coordinated by ABPI, was also divided. In Gabriel Leonardos’ presentation, the proposals included, among others, promoting public debates on the topic, producing guidelines to guide SEPs and FRAND terms, as well as supporting debates on the theme within multilateral organizations such as WIPO and WTO.

In the final presentation on May 23rd, the group addressing “Other Provisions of the IPL,” which encompassed appeals, submissions, deadlines, payments, and filings, members Rafael Atab and Ana Cristina Müller highlighted the rigidity, lack of harmonization, and technological obsolescence of the industrial property administrative process at the BPTO. These issues lead to missed deadlines, high transaction costs, discouragement in using the system, and filings decrease. Among the consensus proposals from the group are the need for investments in IT infrastructure, increased personnel, improved analysis of inconsistencies in submission and filing deadlines, and amendments to the wording of Articles 33, 103, 101, 157, 216, and 221 of the Brazilian IPL.

Dialogues Part II – 05/30

On the second day of the event, held on May 30th, the results of the discussions and proposals from the Trademarks, Industrial Designs, Contracts, and Geographical Indications groups were presented.

Regarding the Trademarks1 group, which focused on the regime of trademark invalidation, Rodrigo Ouro Preto, Director of ABPI, explained the main issue in this aspect, which is deadwood referring to unused trademarks. The group put forward five proposals in this regard: periodic declaration of use, shortened deadline for requesting trademark invalidation, partial invalidation, usage criteria, and degeneration as a basis for declaring trademark invalidation.

The conclusions of the Trademarks2 group, as stated in the report by ABPI Council Member Filipe Fonteles Cabral and the coordinator of ABPI’s Digital Law and Data Protection Commission, José Eduardo Pieri, revealed diverging positions between the BPTO and the other group members. However, in the final proposal regarding the “Opposition System,” the group suggested the implementation of a standardized opposition form, which would include a summary specifying the legal grounds for opposition, the registration number(s) or application(s) supporting the opposition, and the indication of any relevant documents proving prior rights. In the case of “Payment and Fees,” the proposals included the adoption of a unified fee for applications received through the Madrid System, adjustments in application filing and registration granting fees, and the removal of the extraordinary deadline for fee payment upon registration granting, with the current deadlines consolidated to 90 days.

In the report of the group that delved into Secondary Meaning, addressing the acquired distinctiveness of a trademark, the presentation was delivered by Clarissa Jaeger, ABPI’s coordinator of the Trademark Committee. She explained that there was a unanimous agreement on the need for recognition of this right by the BPTO, which would require the inclusion of paragraphs 3 and 4 in Article 159 of the IPL. These paragraphs would recognize, during the examination process, that the sign of the application had acquired sufficient distinctiveness as a trademark by the consumer before its filing (§3); and that the request should be made by the applicant at the time of filing or through an administrative appeal (§4).

In the presentation on “Slogans vs. Nullity,” still within the scope of Trademarks, Ricardo Vieira de Mello, an honorary member of ABPI, demonstrated that the group reached a consensus that “there are effective mechanisms for nullifying registrations that protect signs used as slogans,” such as through the “caducity” clause. As a result, the final proposal from the Trademarks3 group aimed to exclude Section VII of Article 124 from the IPL. He noted that this conclusion was already outlined in ABPI Resolution 38.

In the group addressing the Right of Precedence, the presentation was given by Wilson Jabur, Director of the Domain Names Chamber at the ABPI Dispute Resolution Center (CSD-ABPI). He presented proposals for amendments to three articles of the IPL: Article 129, suggesting a modification to the wording of paragraph 1 and the outright removal of paragraph 2; Article 158, proposing the addition of two new paragraphs; and Article 174, advocating for the inclusion of a single paragraph stipulating that “actions to declare the nullity of a registration based on Article 129, paragraph 1, shall prescribe within one year from the date of grant or definitive closure of the administrative proceeding unless bad faith is proven.”

A consensus was not reached within the group coordinated by the BPTO regarding the annotation process and Contracts. As outlined by the coordinators of ABPI’s Technology Transfer and Franchising Committee, Cândida Ribeiro Caffé and Patrícia Falcão, the BPTO believes that legislative changes are necessary to simplify the procedures related to contract annotation and registration. Conversely, private law entities argue that several procedures could be made more flexible, both in the formal examination and technical review, without requiring modifications to the existing law. The Contracts Coordination at the BPTO has been following the same understanding concerning the minutes of the internal meeting dated December 28, 2022, which were published on December 30. However, the administrative measures aimed at optimizing the registration and annotation of contracts have not been observed by the BPTO.

In discussions aimed at improving the legal framework for Industrial Designs, according to the report presented by ABPI Council Member Ricardo Boclin and the coordinator of the Industrial Design Committee, André de Moura Reis, the group deemed it necessary to evaluate the provisions regarding “Registrability,” “Registration Conditions,” and “Division of Applications and Registrations.” The proposals include changes and additions to paragraphs in Articles 95, 104, and 117 of the IPL, encompassing, among other things, the inclusion of graphic and virtual signs brought about by new technologies, as well as typographic fonts and holographic images.

In the Geographical Indications report, presented by ABPI Council Member Roner Fabris and ABPI’s Geographical Indications Committee coordinator, Andrea Possinhas, a total of seven proposals were presented. The list includes the definition of GI (Geographical Indication) and DO (Denomination of Origin), registration conditions, legitimacy of the representative entity, delimitation of the geographical indication area, authorized uses of GI and DO, cancellation of registrations, and protection of natural factors in DO.

Members who missed the live event can watch the recorded video on the ABPI website’s events page in the exclusive access area.

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