Newsletter 06 - September 2019


Judge of the 13th Federal Court of Rio de Janeiro rejects injunction against the backlog fight

The Brazilian Intellectual Property Association – ABPI acted, along with other entities, as amicus curiae in the rejection signed by Judge Márcia Nunes de Barros of the 13th Federal Court of Rio de Janeiro, of the writ of mandamus with request for an injunction filed by the Association of Officials of the National Institute of Industrial Property (AFINPI), the Inter-Municipal Union of Federal Public Servants of the Municipalities of Rio de Janeiro (SINDISEP-RJ), and the National Association of Industrial Property Researchers (ANPESPI) against the plan to fight patent backlog, undertaken by the BPTO’s new administration. The plan, which aims to drastically reduce the number of patent applications within two years, is supported by BPTO’s Resolutions 240 and 241.

In her order, the judge refused the arguments presented by the plaintiffs that “the new rules issued by the BPTO violate the principles of legality, impersonality, efficiency, and morality”. And argued: “Still in the first examination of cognition, I do not envisage the alleged violation of the principle of impersonality, for I consider it lawful to the Administration to adopt measures and processing flows in order to speed up the processing of requests”.

The judge considered that “the measure pursued needs broad conviction, incompatible with the preliminary judgment since it refers to suspending the effects of administrative acts issued by the BPTO which, until proven otherwise, are deemed valid”. And added: “I also note that there is no evidence of the danger of harm, since there is no concrete information on the effective decrease of the remuneration of patent examiners, adducing the BPTO that, on the contrary, said remunerations should not undergo any negative impact compared to the expected increase in overall productivity”.

In the petition requiring its participation as amicus curiae, ABPI points out that “international cooperation between patent offices is not a new issue, it is already being applied in Brazil and is commonplace throughout the world, while the sovereignty of the national examiner is always maintained in regards to the decision on the merits”. She adds: (…) “BPTO’s Resolutions 240 and 241 are in accordance with both the international legal system, and neither the Paris Union Convention (CUP) nor the TRIPS Agreement require that substantive examination of patent applications be made directly by the patent office of each member country, nor do they prohibit the use of foreign opinions, as with the national one, since art. 35 of the IPL likewise does not prevent the technical examination from relying on the assent issued by the international patent office, either to grant the request or to draft any requirement”.