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

Proposals for reviewing patent legislation, with regard to applications, patenting, term of validity and technology transfer contracts, among others, marked, this Tuesday, 23, the first day of the webinar on GIPI Technical Dialogues ” sponsored by ABPI – Brazilian Association of Intellectual Property. The event, which will have a new round of presentations on the 30th, showed ABPI’s leading role. The entity participated in all 13 subgroups and 14 GIPI meetings that, from August to December of last year, focused on the Industrial Property Law (Law 9.279​/​96).

At the event, the president of ABPI, Gabriel Leonardos, praised the high technical level of the members of the then Ministry of Economy (currently in the Ministry of Development, Industry, Commerce and Services) working at GIPI and recalled that one of ENPI’s central objectives – The National Intellectual Property Strategy is the increase in the number of patents in the country – there were 34,050 requests in 2013 and 27,139 requests last year. “Unfortunately, in this regard we have moved backwards while the whole world has moved forward”, said Leonardos.

When presenting the working group that dealt with the alteration of patents in the area of ​​Biotechnology, the coordinator of the ABPI Patent Commission, Viviane Trojan, clarified that there was no consensus. The subgroup formed by the ABPI proposed changes in the wording of art. 10 of the LPI, 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 subgroup also proposed new wording for item 9.1.1 of Resolution 208/2017 regarding inventions for medical use.

In the group that dealt with amendments and divisions on patent applications, explained the coordinator of the ABPI Patent Commission, Gabriela Salerno, everyone agreed that, due to lack of clarity, the interpretation of the legislation by the INPI and some judicial decisions generate legal uncertainty. The proposals of the subgroup integrated by ABPI contain changes in the wording of Art. 32 and in Art. 26 of the LPI, in order to allow amendments to be made after an examination request and to expand the possibilities of division at any time, covering the entire content of the originally filed application, in line with international practice.

In terms of the duration of patents and the delay in analyzing INPI (National Institute of Industrial Property) exams, the proposals were also antagonistic, according to the coordinator of the Patent Commission, Bernardo Fontes Alexandre. The subgroup of which the ABPI was part pointed out among the causes of the delay the INPI’s lack of infrastructure and human resources, resulting, among others, in legal uncertainty and the disincentive to innovation. Among the proposals presented are the inclusion of a device in the Law that guarantees an adjustment in the period of validity of the patent to compensate for any delay by the INPI.

Convergence marked the group that debated low patenting in Brazil, including the main cause of the problem: little knowledge of the intellectual property culture. In the presentation by ABPI’s 2nd vice-president, Tatiana Campello and lawyer Camila Garrote, the proposals include the inclusion of intellectual property in higher education curricula and the updating of the Innovation Law.

With regard to technology transfer contracts,​ the problem identified in the presentation by lawyer Thereza Curi Abranches and the deputy coordinator of the Technology Transfer and Franchising Commission, Pablo Torquato, refers to the imposition of limits for payments between companies established in Brazil and the obligation to register/annotate with the INPI. To solve the problem, the group proposed to GIPI the inclusion of an interpretative norm in Law 3,470, of November 28, 1958. However, with the publication of Provisional Measure MP 1,152, December 29, 2022, approved by the Senate on last May, the proposal is no longer justified.

On the issue of essential patents (SEps)​ ​and FRAND terms (fair, reasonable and non-discriminatory), the group, coordinated by the ABPI, was also divided. In the presentation made by Gabriel Leonardos, the proposals included, among others, the promotion of public debates around the theme, the production of guides on SEPs and FRAND terms, as well as support for debates on the theme within multilateral organizations such as the WIPO and the WTO.

In the last presentation of the day, by the group that dealt with “Other provisions of the LPI”, involving resources, statements, deadlines, payments and filings, associates Rafael Atab and ​Ana ​Cristina Müller pointed out the rigidity, lack of harmonization and the lag technology of the industrial property administrative process at the INPI. These problems, in turn, result in missed deadlines, high transaction costs, with the consequent discouragement of using the system and a decrease in the number of deposits. Among the group’s consensus proposals​​ are the need for investments in IT infrastructure, increase in personnel, better analysis of inconsistencies in the deadlines for manifestation and filing, with changes in the wording of Articles 33, 103, 101, 157, 216 and 221 of the LPI.

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