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.