Newsletter Edition 28 - September 2021


Technical meeting with the BPTO points to a better qualification of judicial expertise in patent matters

During the first joint technical meeting between ABPI (Brazilian Intellectual Property Association), ABAPI (Brazilian Association of Industrial Property Agents), ASPI (São Paulo Association of Intellectual Property), and the BPTO (Brazilian Patent and Trademark Office) held on September 29th, the engineer and judicial expert Francisco Silva highlighted that a better qualification of experts and clarity in the technical examination of patents definition are essential items for the best result in lawsuits involving patents. Silva even proposed that the judicial expertise in patents should be carried out simultaneously by two specialists, one in patent and the other in the technical area in question. “In Brazil, there are few experts who know about patents, which causes significant damage to the results of the actions”, he said. “As judges, in general, do not understand patents, they are guided by these experts, and the result may not be acceptable”.

The debate on “Infringement actions in the biotechnology area – the impact of the technical examination in the judicial sphere” also brought together Patents Director Liane Lage and Patents II General Coordinator Cláudia Magioli, from the BPTO, and the coordinators of ABPI Biotechnology and Patents Study Committees, Gabriela Salerno and Ana Cláudia Mamede, and moderated by Diogo Netto, the coordinator of ABAPI’s Patent Group. Present at the event, ABPI’s president Luiz Edgard Montaury Pimenta recalled that among its social objectives, ABPI formalized the “efforts for the proper functioning of the IP system in Brazil, which it has been doing on several fronts, such as the events in partnership with the BPTO”. Liane Lage pointed out that it is necessary to “give new meaning to the perspective of the patent examiner, and seek a more holistic view of the system, to help us understand the importance of our work and its impacts on society”.

In her presentation, Cláudia Magioli discussed the “Impact of the Plan to Fight against the Backlog in the area of ​​biotechnology and future challenges”. In the section that debated the effects of ADI 5,529, she said that there was a significant increase in lawsuits questioning the need to extend the patent term, a provision previously provided for in the Brazilian Industrial Property Law (Law 9,279/96) to compensate for the delay in examinations by the BPTO. On the other hand, according to her, the recent Law 14.195/2021, which extinguished the prior consent of Anvisa for pharmaceuticals, gave more “tranquility in the applications of the pharmaceutical area, allowing a more linear curve and in chronological order”. She ended her presentation by listing the main challenges for the post backlog in the biotechnology area: maintaining high productivity, besides dealing with an increase in court decisions and the number of divided applications, among others.

You can watch the event on ABPI’s YouTube channel.