An International Guide to
Patent Case Management for Judges

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3.1.3 The granting of a patent

The granting of a patent is an administrative act of declaration (after which the patent holder’s right is recognized) and attribution (constitution), requiring the patent application and its processing before the government. Drawings

Drawings must be presented clearly in firm, uniform lines and in indelible ink. There must be as many drawings as necessary for the perfect understanding of the patent object and they must be numbered consecutively. Each part, piece or element of a drawing must contain numerical references, which must be described in the specifications and in the claims.

In a patent application for a utility model, it is essential to present one or more drawings, since the reading of the claims is always associated with them, considering that the utility model patents refer specifically to three-dimensional objects. Specifications

A patent application or certificate of addition must be sufficiently specified, which means that it must contain all the details necessary to allow a person skilled in the art to reproduce the object, and it must indicate, where appropriate, the best way of execution (Article 24 of the LPI). The specifications should also point out the existing problem in the state of the art and the proposed solution, specifying the technical sector in which it is intended to be used. Additionally, the specification must clearly highlight the novelty, the technical effect achieved (in the case of an invention) and its advantages in relation to the state of the art. The specifications for a utility model patent application must additionally highlight the conditions under which the object (or part thereof) is better used as a result of the new shape or layout introduced, showing the functional improvement achieved.

An application must start with a title (it cannot be a brand or invented name). This title must define concisely, clearly and precisely the technical scope of the invention and must be the same for the request, specifications, abstract and sequence listing, if any. A patent application must refer to a single invention – or to a group of interrelated inventions in such a way that they constitute a single inventive concept – and describe the invention’s purpose, application and technical field of use, comparing the subject matter of the protection with the state of the art, highlighting its advantages and the problem that it intends to solve. It must then list the drawings, if any, numbering them consecutively and describing their meaning. Then, it must describe, in detail, the subject matter of the patent application according to those drawings, referring to the numerical references of each part of the drawing.

Finally, there must be an abstract summarizing the subject matter of the patent application, following the title, clearly highlighting the subject matter. It must contain between 50 and 200 words and be a maximum of 25 lines of text. The abstract should encompass the technical characteristics, the solution to the problem described and its main uses. The main purpose of this is to facilitate a researcher’s search in the patent banks. Claims

The wording of the claims is of the utmost importance in the preparation of a patent application. The extent of the protection granted by a patent is determined by the content of these claims as interpreted based on the specifications and drawings – that is, the claims define and limit the extent of protection conferred by the patent (Article 41 of the LPI). The claims must be based on the specifications, which characterize the particularities of the application and clearly and precisely define the subject matter of protection, avoiding expressions that lead to uncertainties (Article 25 of the LPI).

Claims can be classified either into:

  • independent claims: claims that, while maintaining the invention unity, or the technical–functional and bodily unity of the object (in the case of utility models), aim at the protection of essential and specific technical characteristics of the invention, or of the utility model, in its integral concept. Independent claims may serve as the basis for one or more dependent claims; or
  • dependent claims: claims that, while maintaining the invention unity, or the technical–functional and bodily unity of the object (in the case of utility models), include features of other previous claims and define details of these features or additional features, containing an indication of their dependence on those claims.

In an invention patent application, there must be a definition, after the expression “characterized by,” of the essential and particular technical features that, combined with the aspects explained in the preamble, are to be protected.

In the case of a patent application for an invention, the claims chart may consist of more than one independent claim, since, in this case, the claims may fall into one or several categories (e.g., product and process; or process and apparatus). However, they must be connected by the same inventive concept and arranged in the most practical way possible, admitting more than one independent claim of the same category if it defines different sets of alternative and essential characteristics to the realization of the invention. Independent claims of different categories in which one of the categories is specially adapted to the other should be preferably drafted to show their interconnection, using expressions in the initial part of the claim such as “apparatus for carrying out the process defined in the claim” and “process to obtain the product defined in the claim.”10

In the case of a utility model patent application, after the expression “characterized by,” all the elements that constitute the model must be defined, as well as their positions and interconnections in relation to the whole. In a utility model patent application, the set of arrangements and forms responsible for the best use of the object must be fully characterized in a single and independent main claim. The utility model may include complementary elements of optional use or variations of form characterized in dependent claims, defined in the main claim, that do not change the unity of the model and its operation. If the utility model has a flat structure, as defined in the main claim, a dependent claim describing the secondary three-dimensional shape of the object arising from that flat structure is admitted. Novelty

An invention or utility model is considered new when it is not comprised by the state of the art – that is, when it is not fully described by a single document in the state of the art (Article 11 of the LPI) existing prior to the filing date, except if the inventor uses the grace period or claims priority of a former application. The invention or utility model must not have been revealed to the public in any form – written or spoken – by any means of communication, use, presentation at trade shows or sale anywhere in the world.

However, the disclosure of an invention or utility model, if it occurs during the 12 months preceding the filing date or the priority date of the patent application, is not considered as part of the state of the art if such a disclosure is made by the inventor or by a person authorized by the inventor, whether in exhibitions, lectures or publications (Article 12 of the LPI). It is worth noting that the INPI may require a statement from the inventor concerning the disclosure, accompanied or not by evidence, indicating the form, place and date of the disclosure. Also, the inventor may indicate this information when filing the application.

The unionist priority established by Article 4 of the Paris Convention ensures that, within 12 months, the disclosure of an invention or utility model – resulting from the first filing of an application in one of the signatory countries of the Convention, other than Brazil – does not jeopardize the subsequent filing of a corresponding application in Brazil (Article 16 of the LPI). Therefore, any disclosure occurring between the claimed priority date and the date on which the application was filed in Brazil does not affect the novelty and inventive step of the application in Brazil.

If the application filed in Brazil presents additional material in relation to the first filing abroad – whose priority is being claimed – the date of the examination of the state of the art is the date of filing in Brazil. It should be noted that the term of protection for a patent is counted from its filing date in Brazil.

An invention or utility model patent application originally filed in Brazil (without priority claim and not yet published) guarantees the right of priority to a subsequent application on the same subject matter filed in Brazil by the same applicant or successors within a period of one year (Article 17 of the LPI). Upon the filing of the subsequent application, the priority claim must be presented by indicating on the filing form the number and date of the previous application. Thus, the earlier application that serves as the basis for the internal priority claim cannot be used to invalidate the novelty of the later one. Additionally, the previous application is considered definitively dismissed.

Priority is admitted only for the subject matter disclosed in the previous application, not extending to any new matter introduced (Article 17(1) of the LPI). Both the previous and the subsequent application must have complete technical content (with specifications, drawings and a claim chart), each with its own numbering. It should be noted that a patent application originating from the division of a previous application cannot serve as the basis for claiming priority (Article 17(3) of the LPI).

Internal priority does not extend the time limits for claiming unionist priority. That is, if the applicant wishes to file corresponding applications in other countries, they must do so within 12 months of filing the first application (i.e., the application that served as the basis for the internal priority). Inventive step

An invention presents an inventive step if it is not derived from the state of the art in a manner that is evident or obvious to a person skilled in the art (Article 13 of the LPI). That is, a solution presented in an invention has an inventive step if it is not obvious to a person skilled in the art, with the resources available in the state of the art, at the time of filing. Therefore, an invention with an inventive step must represent something more than the result of a mere combination of known characteristics or of the simple application of knowledge usual to a person skilled in the art.

A utility model presents an inventive step if, for a person skilled in the art, the subject matter of the protection is not derived, in a common or ordinary manner, from the state of the art (Article 14 of the LPI). In utility models that involve an inventive step, obvious or simple combinations of characteristics in the state of the art are accepted, as are predictable technical effects, provided that the model to be patented presents a new shape or layout that results in a functional improvement in the use or manufacture of the object to which the model applies.

The legal literature comments that

[a]s a general rule, novelty is understood to exist whenever the invention or model is not fully provided for by a single state of the art document. This is because if two or more state of the art documents need to be combined in order to provide for the invention, the issue shifts to determining the inventive step, in other words, it should be determined whether or not the combination of those documents was obvious to the person skilled in the art.11 Industrial application

An invention or utility model is considered susceptible to industrial application if it can be used or produced in any type of industry (Article 15 of the LPI). Non-patentable inventions and utility models

A subject matter is patentable if it is not prohibited by law, and it meets the legal requirements established in Articles 8, 9, 11, 13, 14 and 15 of the LPI and the conditions set out in Articles 24 and 25 of the LPI.

Brazilian legislation does not have the concept of patent eligibility. Instead, it clarifies what subject matters are patentable and requires that they derive from an inventive step.

According to Article 18 of the LPI, the following items are not patentable:

I – anything that is contrary to morals, good customs and public security, order, and health;

II – the substances, materials, mixtures, elements, or products of any kind, as well as the modification of their physical-chemical properties and the respective processes for obtaining or modifying them, when resulting from the transformation of the atomic nucleus; and

III – the whole or part of living beings, except for transgenic microorganisms that meet the three requirements for patentability – novelty, inventive step, and industrial application – provided for in Article 8, and that are not a mere discoveries.

Article 18 defines “transgenic microorganisms” as

organisms, except the whole or parts of plants or animals, that express, through direct human intervention in their genetic composition, a characteristic not normally attainable by the species under natural conditions.

Article 10 of the LPI also indicates several subject matters that are considered neither inventions nor utility models:

I – discoveries, scientific theories, and mathematical methods;

II – purely abstract conceptions;

III – commercial, accounting, financial, educational, advertising, rafflling, and inspection schemes, plans, principles, or methods;

IV – literary, architectural, artistic, and scientific works or any aesthetic creation;

V – computer programs;

VI – presentation of information;

VII – rules of games;

VIII – operating or surgical techniques and methods, as well as therapeutic or diagnostic methods, for application to the human or animal body; and

IX – the whole or part of natural living beings and biological material found in nature, or even if isolated therefrom, including the genome or germoplasm of any natural living being and natural biological processes.