3.2 Patent office and administrative review proceedings
3.2.1 National Institute of Industrial Property
The INPI is a federal autonomous government agency linked to the Ministry of Economy and was created in 1970 by Law No. 5,648, of December 11, 1970.17 The agency’s main purpose is to implement, nationally, the rules governing intellectual property for industry. Thus, it is responsible for the registration of marks, industrial designs, geographical indications, computer programs and circuit topographies; the granting of patents; and the annotation of franchising agreements. It also provides its opinion regarding the signing, ratifying and terminating of conventions, treaties, agreements and arrangements on industrial property.
The INPI must observe, regarding patent protection, the LPI and Law No. 10,196, of February 14, 2001,18 which govern the protection of industrial property in Brazil. It must also observe the Paris Convention and the TRIPS Agreement. Law No. 13,123, of May 20, 2015, also governs the matter. Brazil is also a signatory to the PCT,19 which provides for the filing of an international application to seek protection for an invention in different countries.
Article 227 of the LPI provides that the classifications related to the matters of marks, patents and industrial designs are established by the INPI when they are not set forth in a treaty or an international agreement in force in Brazil. Specifically, regarding patents, their grant is established in Article 2 of the LPI and regulated in Articles 3–93 and 212–244 of the LPI. The INPI issued Normative Rulings No. 30, of March 18, 2013, and No. 31, of December 4, 2013, which are administrative rules that help to understand and apply the LPI. A number of additional INPI ordinances and rulings establish guidelines for the examination of patent applications.20
The INPI has, in its organizational structure, the Intellectual Property, Innovation, and Development Academy (Academia de Propriedade Intelectual, Inovação e Desenvolvimento), whose authority is described in Article 140 of the Internal Rules of the INPI21 and whose primary role is the dissemination of knowledge in the field of industrial property. Another body within the INPI – the Intellectual Property Training and Continued Education Division (Divisão de Formação e Extensão em Propriedade Intelectual),22 provided for in Article 141 of the Internal Rules of the INPI – has a purpose similar to that of the Intellectual Property, Innovation, and Development Academy but is focused on the relations with other public and private bodies.
Both bodies are competent for the training of administrative agents and for their constant improvement throughout their careers, which is also essential for receiving appropriate remuneration and functional evolution. This can be seen from the INPI’s Normative Ruling No. 48, of February 18, 2016, which “addresses the individual performance assessment of INPI’s employees, focusing on the development in the effective position, for purposes of stability in the public service during the probation period, to receive the Industrial Property Field Activity Performance Bonus […] and functional evolution and promotion in INPI’s Career and Positions Plan.”
Beyond the internal limits, the aforementioned bodies dedicate themselves to the indistinct dissemination of knowledge in the industrial property field, promoting courses – taught face-to-face or at a distance, of short or long durations – to the external public.
It should be noted that, as they come from the initiative of the entity responsible for the control of the industrial property in the country, the courses provided by the INPI are one of the main sources of this knowledge in Brazil.
3.2.2 Patent attorneys
Any attorney regularly enrolled with the Brazilian Bar Association may act in the administrative stage before the INPI. However, the application may be filed by an individual or legal entity domiciled in the country and who does not have an attorney-in-fact appointed. It may also be filed by any citizen, on behalf of third parties, by means of a power of attorney, under the terms of Article 216 of the LPI, whether an attorney or attorney-in-fact, without special powers, or an industrial property agent. In the case of foreign applicants, the individual or legal entity is required to appoint and maintain an attorney-in-fact in Brazil with powers to represent them in the administrative and judicial proceedings, including to receive service of process (Article 217 of the LPI).
The power of attorney – whether original, transcript or authenticated photocopy – must be in Portuguese. Consular authentication and notarization of signature is not required (Article 216(1) of the LPI). The power of attorney must be submitted within 60 days from the date of the first act of the party in the proceedings, regardless of notification or requirement, under penalty of dismissal. The dismissal of the patent application is final (Article 216(2) of the LPI).
3.2.3 Patent application
Patent applications can be filed through the “e-Patentes” platform, which can be accessed from the INPI’s portal www.gov.br/inpi/en. For the international filing of applications and associated documents, the INPI has recommended ePCT-filing – the World Intellectual Property Organization’s online service – since October 20, 2014.
Articles 19–20 of the LPI govern the filing of patent applications with the INPI. A patent application, under the conditions established by the INPI, must contain the
I – request;
II – specifications;
III – claims;
IV – drawings, if applicable;
V – abstract; and
VI – proof of payment of the filing fee. (Article 19 of the LPI)
Articles 22–26 of the LPI and Normative Rulings No. 30, of December 4, 2013, and No. 31, of December 4, 2013, regulate the conditions of a patent application.
The object of the patent must be sufficiently described in the specifications, clearly and completely, to allow its reproduction by a person skilled in the art and must indicate, when appropriate, the best way to execute it (Article 24 of the LPI). When an application deals with biological material, and this is essential to the practical execution of the object of the application, which cannot be described pursuant to Article 24 of the LPI and is not available to the public, the report must be supplemented, even after the examination request, with the deposit of the material at an institution authorized by the INPI or indicated in an international agreement in force. If there is no such institution in the country, the user may deposit the biological material in any of the international deposit authorities recognized by the Budapest Treaty,23 and it must be done before the filing date of the patent application, and such data must integrate its specifications.
The forms required to file the application are available from INPI’s website (www.gov.br/inpi/en). After filing the application, the applicant must regularly consult the Journal of Industrial Property (Revista da Propiedade Industrial; RPI), an official publication of the INPI, published weekly and free of charge on the INPI’s website. When the documentation is received, the minimum conditions for accepting the patent application or the certificate of addition are verified – namely, that it contains technical content, the application and the proof of payment of the filing fee. If the application is insufficient but contains data regarding the object, the applicant and the inventor, it may be delivered to the INPI by means of a dated receipt, which establishes the requirements to be met, within 30 days (Article 21 of the LPI).
The submission of additional documentation both in relation to the filing of the application and at later stages is by means of petitions using the forms titled “Petition Related to Application, Patent or Certificate of Addition” (Petição Relacionada com Pedido, Patente ou Certificado de Adição). There are some specific situations, listed on the INPI’s website, that exempt the use of these petitions.
3.2.3.1 Dissemination of the state of the art
In order for novelty to exist, which is paramount for the granting of a patent, the object must be beyond the state of the art. The state of the art refers to everything that has become accessible to the public before the filing date of the patent application, by written or oral description, by use or any other means, in Brazil or abroad (Article 11(1) of the LPI), with exceptions in the provisions of Articles 12 (grace period), 16 (unionist priority) and 17 (internal priority) and excluding that which is kept under industrial secret.
For the purposes of assessing novelty, the full content of an application filed in Brazil and not yet published are considered as state of the art from the date of filing or of the priority claimed, provided that it is published, even if subsequently (Article 11(2) of the LPI). In this case, the subject matter of an application that has not yet been published is considered as state of the art solely for the analysis of the novelty requirement, not the inventive step requirement. This provision also applies to international patent applications filed in accordance with a treaty or convention in force in Brazil if there is national processing (Article 11(3) of the LPI).
Inventors are able to better identify the nature of their creation (the invention or utility model) based on the prior knowledge of the state of the art to properly apply for protection. The INPI recommends conducting a preliminary search before filing a patent application to assess the state of the art related to the subject matter to be claimed and to check whether the invention is new or inventive. If the invention is not new but is, for example, a functional improvement to an existing object, a utility model application can be filed.
3.2.3.2 Disclosure of the state of the art by third parties
If a third party discloses the invention or utility model in the 12 months preceding the filing date or the priority date of the patent application, based on information obtained directly or indirectly from the inventor or as a result of acts performed by the inventor (Article 12(III) of the LPI), or is disclosed by the INPI by means of the official publication of the patent application filed without the inventor’s consent, based on information obtained directly or indirectly from the inventor or as a result of acts performed by the inventor (Article 12(II) of the LPI), a grace period will be considered and will not affect the assessment of novelty. However, the INPI may require from the inventor a statement concerning the disclosure, whether or not accompanied by evidence, under the conditions established in the regulation (Article 12(1) of the LPI).
3.2.3.3 Priority date
The priority date is the date of filing the application. A patent application filed in a country that has an agreement with Brazil, or in an international organization, producing the effect of a national filing, will be ensured the right of priority within the time limits established in the agreement, and the filing will not be invalidated or jeopardized by events occurring within these time limits (Article 16 of the LPI). This article of the LPI ensures the right of priority provided for in Article 4 of the Paris Convention.
A priority claim is made upon filing and may be supplemented within 60 days by other priorities prior to the date of filing in Brazil (Article 16(1) of the LPI). The priority claim is supported by an appropriate document of origin, containing the number, date, title, specifications and, if applicable, claims and drawings, accompanied by a translation of the filing certificate or equivalent document, containing data identifying the application, whose content is the entire responsibility of the applicant in Brazil (Article 16(2) of the LPI). If proof is not presented at the time of filing, it must be provided within 180 days of the date of filing (Article 16(3) of the LPI).
For international applications filed under a treaty in force in Brazil, the translation must be submitted within 60 days of the date on which national processing starts in Brazil (Article 16(4) of the LPI). Where the application filed in Brazil is faithfully contained in the document of origin, a statement by the applicant in this respect is sufficient to replace the translation (Article 16(5) of the LPI). In case of priority obtained by assignment, the corresponding document must be presented within 180 days of the filing date or, if this is the case, within 60 days from the date on which national processing starts, waiving consular legalization in the country of origin (Article 16(6) of the LPI).
Failure to provide evidence within the time limits established in Article 16 of the LPI results in loss of priority (Article 16(7) of the LPI). This penalty applies to the lack of evidence mentioned in Article 16(2)–(3) of the LPI. In the event of priority of a PCT application made in the international phase, part of the Brazilian legal scholarship argues that the application of this penalty is questionable.
If the application filed in Brazil presents additional matters in relation to the first filing abroad – whose priority is being claimed – the date for the examination of the state of the art is the date of filing in Brazil. It should be noted that the patent term of the application is counted from its filing date.
When interested parties file a patent application, they start to enjoy an expectation of rights. A patent holder’s exclusive right arises only with the granting of the patent, formalized by the issuance of the letters patent. Only after the granting can holders prevent third parties not authorized by them from performing the activities that are exclusive to the holders, under penalty of civil and criminal penalties and according to the prerogatives and limitations set forth in the legislation.
Within three years of the grant of the patent, the patent holder must start exploiting or commercializing the product and exercising their right, otherwise the holder may be subject to having the patent compulsorily licensed (Article 68(5) of the LPI). A compulsorily licensed patent may lapse for lack of exploitation if, after two years from the first compulsory license, the nonuse is not justified (Article 80 of the LPI).
3.2.3.4 Publication
Publications are made in the RPI. According to Article 226 of the LPI, the INPI’s acts in administrative proceedings related to industrial property are effective only from their publication in the respective official body, except for
I – those that expressly do not require notification or publication under the provisions of this Law;
II – administrative decisions, when the notification is made by mail or by information provided to the interested party to the case; and
III – opinions and internal orders that do not need to be known by the parties.
3.2.3.5 Disclosure
A patent application is kept secret for 18 months from the filing date or earliest priority date, if any, after which it is published, except as provided for in Article 75 of the LPI (Article 30 of the LPI). However, the publication of the application may be brought forward at the applicant’s request (Article 30(1) of the LPI). This publication must contain data identifying the patent application, and a copy of the specifications, claims, abstract and drawings must be made available to the public by the INPI (Article 30(2) of the LPI). In the cases set forth in Article 24(1) of the LPI, biological material becomes available to the public with such a publication (Article 30(3) of the LPI).
3.2.3.6 Applications of interest to national defense
Article 75 of the LPI regulates patent applications originating in Brazil whose subject matter is of interest to national defense and is therefore processed confidentially, not being subject to the provisions of the LPI. Unless expressly authorized by the competent entity, it is prohibited to file or disclose abroad a patent application whose subject matter has been considered of interest to national defense (Article 75(2) of the LPI). Additionally, the exploitation and assignment of the application or patent that is of interest to the national defense depend on the prior authorization of the competent body. Indemnity is guaranteed whenever the filer’s or holder’s rights are restricted (Article 75(3) of the LPI).
3.2.3.7 Patent term restoration
A patent holder may request the restoration of an application or patent within three months from the date of publication of the shelving in the RPI or from the expiry of the patent. For this, the holder must prove to the INPI that the annual fee and restoration fee have been paid (Article 87 of the LPI). Failure to request restoration will lead to definitive shelving.
3.2.3.8 Post-issuance corrections and administrative proceedings
Once the patent application is published, and until the end of the examination, interested parties may present documents and information to challenge the examination (Article 31 of the LPI). The examination does not begin until 60 days have elapsed from the publication of the application (Article 31(1) of the LPI).
In order to better clarify or define the patent application, the applicant may amend the application up until the request for examination, as long as the amendments are limited to the subject matter initially disclosed in the application (Article 32 of the LPI).
Once a patent is granted, there is no specific provision in the law for its correction. However, in the administrative sphere, it is possible to request administrative nullity before the INPI, as governed by Articles 50–55 of the LPI.
3.2.4 Administrative review proceedings
The procedures for filing and granting patents are considered administrative proceedings, which are governed by the LPI and by specific INPI rules (Figure 3.2). An appeal may be filed against the decisions rendered by the INPI regarding the granting or not of a patent within 60 days of the decision (Article 212 of the LPI). A decision that determines the final dismissal of a patent application or that grants a patent application, a certificate of addition is not appealable (Article 212(2) of the LPI).
Source: Adapted and translated (by the authors) from Núcleo de Inovação Tecnológica, Processo Resumido para Requerimento de Patentes (June 5, 2016), pt.slideshare.net/AntnioSilva61/fluxograma-de-patente-resumido
According to Article 221 of the LPI, the time limits for the administrative proceedings for granting a patent are continuous, automatically extinguishing the right to perform the act after its expiry, unless the party proves that they did not perform the act for a just cause – that is, if the party demonstrates that an unexpected event occurred beyond their will and that prevented them from performing the act. In counting the time limits, the start day is excluded, and the due date is included (Article 222 of the LPI). The time limits only start being counted from the first business day after the notification, which is made upon publication in the INPI’s official body (Article 223 of the LPI). Regarding the administrative proceedings governed by the LPI, Article 224 clarifies that, if there is no express determination, 60 days is the time limit that must be considered for the practice of the act.
It should be noted that judicial acts in relation to a patent protection matter or possible questioning regarding the granting of its registration are governed by the CPC, which has specific rules regarding time limits and their counting.
The INPI’s acts, orders and decisions regarding industrial property are published in the RPI. To facilitate reading, a table of codes of orders and a numerical index on the RPI’s initial pages allow for the identification of the progress of the application or patent. Users must monitor their applications through the RPI with the number assigned to their application. The request for a patent application or certificate of addition is notified in the RPI with Order Code 2.10.
Next is the formal examination regarding the provisions of Article 19 of the LPI, the other provisions regarding its form or both. If such provisions have not been met, the formal requirements are published with Order Code 2.5. The user is required to meet the requirements within 30 days, free of charge, under penalty of the documentation being returned or the application being dismissed (Article 20 of the LPI). If the requirements are not met by this deadline, the filing is not accepted, and its numbering is canceled.
If there are no formal requirements, Order Code 2.1 is notified. If the application is properly supported with documents, then, after formal analysis, it will be filed, and the filing date will be the date of its submission (Article 20 of the LPI). The application is kept confidential for 18 months from the earliest priority date (Article 30 of the LPI). After 18 months, the application is published (Order Code 3.1).
In the case of a certificate of addition, the confidential period is 18 months from the filing date of the main application. When publication of the main application has occurred, the application for a certificate of addition is published immediately. The user may request early publication of their application (Order Code 3.2); however, this does not mean that the technical examination will be advanced.
A withdrawn or abandoned patent application must also be published (Article 29 of the LPI). A request for withdrawal must be submitted within 16 months of the filing date or earliest priority date (Article 29(1) of the LPI). The withdrawal of a previous filing without producing any effect gives priority to the immediately subsequent filing (Article 29(2) of the LPI).
It is the applicant’s responsibility to follow up on the processing of their patent application. This can be done by the PUSH-INPI system by registering the desired process and receiving the publications at the registered email address; however, this does not replace the follow-up made via RPI.
The applicant or patent holder has 60 days (ordinary term) from the publication of the granting in the RPI (Order Code 9.1) to present evidence they have paid the fee for the issuance of the letters patent. The mentioned payment can also be made within 30 days (extraordinary term) from the end of the previous term by means of a payment of a specific fee, providing evidence of such to the INPI,24 under penalty of final dismissal of the application (Order Code 11.4). PR Resolution No. 13, of March 18, 2013, regulates the delivery of letters patent in electronic format only and presents other provisions.
The substantive examination of the patent application must be requested by the applicant or by any interested party within 36 months of the filing date, under penalty of the application being dismissed (Article 33 of the LPI). In this case, upon notification of the dismissal in the RPI (Order Code 11.1), the applicant has 60 days to pay a reinstatement fee, together with a request for application examination, under penalty of final dismissal (Order Code 11.1.1; Article 33(1) of the LPI), thus restoring the application. The reinstatement must be requested using the form Petition Related to Application, Patent or Certificate of Addition. If the reinstatement is not requested, the matter subject to the patent application becomes available in the public domain. To better clarify or define the patent application, an applicant may make amendments up to the request for examination, provided that they are limited to the matter initially disclosed in the application (Article 32 of the LPI).
Once the examination is requested, the following must be submitted within 60 days, whenever requested, under penalty of having the application dismissed:
I – objections, search for prior art and examination results for the granting of a corresponding application in other countries, when priority is claimed;
II – documents required for the regularization of the process and examination of the application; and
III – a simple translation of the appropriate document referred to in Paragraph 2 of Article 16 of the LPI, if it has been replaced by the declaration provided for in Paragraph 5 of the same article. (Article 34 of the LPI)
During the technical examination, a search report and opinion concerning the following are prepared:
I – patentability of the application;
II – suitability of the application given the nature claimed;
III – reformulation of the application or division; or
IV – technical requirements. (Article 35 of the LPI)
This search is conducted, in general, by engineers and technicians specialized in the patent system and in various technological fields. They check whether the wording of the application complies with legal standards, as well as with the state of the art, in a survey that may include technology from all over the world. At this stage of examination, any interested party can submit comments and documents.
When the opinion ascertains the non-patentability or the lack of suitability of the application to the nature claimed, or makes any requirement, the applicant will be notified to provide their comments within 90 days (Article 36 of the LPI). If the requirement is not met, the application will be definitively dismissed (Article 36(1) of the LPI). If the requirement is answered, even if not satisfied, or its formulation is contested, with or without a statement on patentability or suitability, the examination will proceed (Article 36(2) of the LPI).
The examination may conclude that the application is patentable (Order Code 9.1); that it is necessary to adapt the application to the claimed nature, to reformulate or divide the application or to meet technical requirements (Order Code 6.1); or that the application is unpatentable (Order Code 7.1). The fulfillment of the requirements set out or the opinion on the patentability of the application must be met within the period determined by Article 36 of the LPI – that is, within 90 days.
Once the examination is concluded, a decision is rendered, either granting or rejecting the application (Article 37 of the LPI).
3.2.4.1 Declaration of patent nullity
The patent’s nullity is declared administratively when:
I – any one of the legal requirements has not been met;
II – the specifications and the claims do not comply with the provisions of Articles 24 and 25 of the LPI, respectively;
III – the subject matter of the patent extends beyond the content of the application originally filed; or
IV – any of the formalities essential to the granting have not been met during the patent’s processing. (Article 50 of the LPI)
It is possible that the nullity does not affect all claims. The condition for a partial nullity is that the remaining claims be patentable by themselves (Article 47 of the LPI).
Patent nullity takes effect from the date the application is filed (Article 48 of the LPI). An action for nullity may be filed at the INPI’s own initiative or at the request of any person with a legitimate interest, within six months counted from the grant of the patent (Article 51 of the LPI). The nullity proceedings continue even if the patent’s term has expired (Article 51(1) of the LPI).
The first hypothesis of an administrative declaration of nullity is the one that occurs before the INPI in cases where the offense is due to other legal provisions contained in the LPI,25 as provided for in Article 50 of the LPI.26 In this case, even if the interested party does not request the declaration of nullity of the patent, the INPI has jurisdiction to file the administrative proceedings at its own initiative, pursuant to Article 51 of the LPI.27 Therefore, it is important to highlight the rule provided for in Article 51(1), which governs the continuation of nullity proceedings even if the patent has been terminated. As André Luiz Santa Cruz Ramos has stated, “this rule is explained by the declaration of ex tunc (retroactive) effects of the patent nullity declaration.”28 After all, even if the patent has already been terminated, patent nullity necessarily nullifies all effects produced during the patent’s existence as well.
From the moment that administrative proceedings are filed, the due process of law is followed. Patent holders may exercise their right of defense29 and must make a statement within 60 days.30 The INPI then issues an opinion and notifies the holder and the claimant in the same period above.31 The INPI’s president then decides on the matter, thus closing the administrative proceedings.32 The INPI publishes the decision of the action for nullity once it has become final and unappealable, in order to notify third parties (Article 57(2) of the LPI).
3.2.4.2 Appeals
As for the appeals that may be filed in the administrative phase before the INPI, the provisions of Articles 212–220 of the LPI are applicable.
Article 212 of the LPI establishes that, unless expressly provided otherwise, the decisions mentioned in the law may be appealed, though they must be filed within 60 days. Appeals are entertained with supersedeas and full review effects, applying all the relevant provisions to the lower court’s examination as applicable.
A decision that determines the definitive dismissal of a patent application or that grants the application for a patent, a certificate of addition is unappealable (Article 212(2) of the LPI).
A petition will not be entertained:
I – if it is submitted after the time limit set in the law; or
II – if it is not accompanied by the proof of payment of the respective fee in the amount in effect on the date of its presentation. (Article 218 of the LPI)
A petition, the opposition and the appeal, will not be entertained when:
I – it is submitted after the time limit set in the law;
II – it does not contain legal grounds; or
III – it is not accompanied by the proof of payment of the corresponding fee. (Article 219 of the LPI)
The INPI will take advantage of the parties’ acts, whenever possible, establishing the appropriate requirements (Article 220 of the LPI).
Interested parties are notified, within 60 days, to submit their briefs on the appeal (Article 213 of the LPI). For the purposes of complementing the appeal brief, the INPI may impose requirements, which must be met within 60 days (Article 214 of the LPI). After this deadline, the appeal is decided (Article 214(1) of the LPI).
Appeals are entertained with full supersedeas and review effects and are decided by the INPI’s president. The decision, being final and unappealable, ends the administrative proceeding (Article 215 of the LPI).