4 years ago, with the Rio Olympics in full swing, we reported on the patent granting process in Brazil. In particular, attention was drawn to the very long waiting time between the filing of a patent application and its grant, which could be as long as 12 years, and which was explained by the backlog accumulated by the Brazilian INPI.
Since then, the Brazilian INPI has decided to take matters into its own hands. So it’s time for us to bring ourselves up to date with the current reality of the patent granting process in Brazil. With the help of Louis Lozuet from the Brazilian law firm Venturini IP, based in Rio de Janeiro, we’ll be giving you all the tips you need to know to obtain a patent there quickly.
Points to remember :
- The patentee’s monopoly is guaranteed for 20 years from the filing date or 10 years after the patent is granted, whichever is longer;
- An accelerated examination is available for certain types of applicants and certain technical fields;
- Setting up of a program (PPH) to obtain a patent in Brazil on the basis of claims already granted in other partner countries.
- Implementation of a program to reduce the Backlog by the end of 2021, and maintain an average delivery time of 2 to 3 years.
Reforms that boost the economy and encourage innovation
As our colleague Louis Lozuet from Venturini IP reminds us, despite the economic crisis, political turbulence and “trade wars” that can be observed around the world today, it is undeniable that Brazil has over the last twenty years worked to promote structural reforms aimed at boosting its economy, modernizing policies to encourage innovation and improving its intellectual property system.
These actions have led, among other initiatives, to the recent promulgation of :
- The Law on Economic Freedom (Law no. 13.874/2019): this law establishes the Declaration of Rights to Economic Freedom, setting out the rules for the protection of entrepreneurial freedom and the free exercise of economic activity. These principles are to be followed to some extent by public bodies such as the Brazilian National Institute of Industrial Property (INPI).
- The Innovation Law (Law no. 13.243/2016) and its regulatory decree (Decree no. 9.283/2018): following an amendment to the Brazilian Federal Constitution (ECno. 85/2015) aimed at placing Science and Technology activities, including research and development, at the heart of Brazil’s economic development, the 2016 Innovation Law substituted the former 2004 law as well as nine other laws, in order to create a less bureaucratic legal environment more favorable to collaboration between the private sector/industry and public/academic research institutions.
Provisions to resolve Brazilian INPI backlog
However, stimulating technical research and development to promote innovation for the benefit of all also depends on an efficient intellectual/industrial property system. Brazil has long been known for its backlog ofsubstantive examination of patent applications. Depending on the sector (e.g. pharmaceuticals and telecommunications), an average of 11 years should be taken into account to obtain a patent (from application to grant).
Brazil’s Industrial Property Law (Law no. 9.279/1996 – LPI) has had to adapt to the reality of the office, with article 40 containing a special provision concerning the validity period of a patent:
Art. 40, LPI The patent shall remain in force for a period of 20 (twenty) years and the utility certificate for a period of 15 (fifteen) years from the date of filing. Sole Paragraph : The term of validity shall not be less than ten (10) years for the patent and seven (7) years for the utility certificate from the date of grant, except in cases where the INPI is prevented from examining the merits of the application, due to a court case or in cases of force majeure.”
So even if your patent is granted very late, your monopoly is guaranteed to last at least 10 years from the date of grant. This is the case even if these 10 years exceed the “classic” validity period of 20 years!
In addition, in line with the legislative initiatives mentioned above, the Brazilian INPI has set up several programs aimed at speeding up the patent granting process (so-called “priority” examination procedures, Brazilian INPI Regulationno. 247/20), including :
- Applicants may request an accelerated substantive examination in the following cases:
- Depositors (individuals) over 60 years of age ;
- Patent applications infringed by third parties ;
- Applicants needing a granted patent to obtain financing for the commercial exploitation of their inventions;
- Depositors (natural persons) with physical or mental disabilities or serious illnesses ;
- Patent applications for the treatment of AIDS, cancer, rare or neglected diseases;
- Patent applications filed by small companies ;
- Applications from scientific and technological institutions ;
- Applications filed in Brazil give priority to applications filed abroad ;
- Patent applications covering green technologies ;
- Patent applications filed by startups; and
- Patent applications covering technologies for the treatment of COVID-19 (pharmaceutical products and processes; healthcare equipment and/or materials for the diagnosis, prophylaxis and treatment of COVID-19).
In addition, the following persons may request an accelerated substantive examination:
- Third parties accused of wrongfully copying the subject matter of a patent application ;
- A third party who owns a technology that has subsequently been registered as a patent;
- The Ministry of Health, in the case of patent applications for medicines acquired by the National Public Health System (SUS); and
- The State when a national emergency is declared or when there is a public interest in examining a specific request.
A new accelerated substantive examination procedure
The Brazilian INPI has also introduced an accelerated substantive examination procedure for applications subject to a PPH(Patent Prosecution Highway) pilot program. In this sense, since 01/12/2019, a new PPH pilot program, with standardized requirements and governed by a single regulation (n°252/19), is in force. The Brazilian INPI has already signed PPH agreements with numerous patent offices (Japan, Argentina, Colombia, Chile, Costa Rica, Denmark, El Salvador, Ecuador, Nicaragua, Panama, Paraguay, Peru, Uruguay, Europe-EPO, United States, United Kingdom, Dominican Republic, China, Austria, Sweden and South Korea).
Reduce backlog by 80% by end 2021
Finally, since August 2019, the Brazilian INPI has implemented its ambitious ” Plan de Combat contre le Backlog des Applications de Brevet ” aimed at reducing examination and grant times (INPI Regulationsno. 240/19andno. 241/19). Below are some of the key features of the combat plan:
- Objective To reduce the backlog by 80% by the end of 2021, and thereafter maintain an average delivery time of 2 to 3 years from the request for substantive examination.
- Applications concerned All applications filed before 12/31/2016, and for which the results of the prior art search or examination are available in the context of corresponding patent application procedures of the same family conducted by a foreign office. These applications precisely cover around 80% of unexamined applications by the Brazilian INPI in August 2019;
- How it works The plan is based on the mass publication of standardized reports, essentially a list of prior art cited by a foreign office. Applicants are invited to submit the same claims accepted for a counterpart foreign patent and/or supporting arguments used abroad. The Brazilian INPI can also take advantage of the fact that no response to these reports needs to be filed in the event of an abandoned application. Abandoned applications can therefore be rejected without substantive examination. Around 20% of applications awaiting examination are actually abandoned.
In view of the above, we advise you to file the same claims in Brazil as you would in any other country! This will speed up the grant procedure for your Brazilian patent application.
At the beginning of December 2019, i.e., just over four months after the start of the plan, the Brazilian INPI had reduced the backlog by around 28,000 applications. The graph below shows the evolution of the plan since the start in August 2019:
According to Brazilian INPI statistics, pending applications at the end of June 2020 were distributed as follows: 35% chemistry; 25% mechanical engineering; 19% electrical engineering; 13% instrumentation; 8% other technologies.
The graph below illustrates a probable result by the end of this year, if the Brazilian INPI manages to keep up the same pace.
All the indications are that the Brazilian INPI will achieve the desired result. Indeed, as examiners have adapted well to working remotely, it is unlikely that progress will be interrupted by the current Covid-19 crisis. As the graph above shows, the number of pending applications would be around 70,000 by the end of this year, corresponding to a 53% reduction in backlog since the start of the program.
After long years of frustration, it seems that applicants will finally see a significant improvement in the backlog in Brazil. Indeed, the Brazilian INPI has implemented a number of initiatives that are finally enabling it to meet the challenge of consolidating its position among the world’s leading patent offices.
This is a great achievement for the efficiency and quality of the Brazilian intellectual property system. It is making great strides towards its decisive role of helping to foster technical research and development in Brazil.
Authors: Louis Lozuet / Jérémy Pottier
You may also be interested in these articles:
👉🏼USPTO, apply for a patent in the US
👉🏼CNIPA, apply for a patent in China
So, would you like to extend your request to Brazil?
Our industrial property experts can answer all your questions
