BRAZIL
December 04, 2017
The Brazilian Patent Office recently issued a resolution ruling the new procedures to register software in the country. These rules are already in force and, in a nutshell, (i) institute a completely electronic process (including the acceptance of documents with electronic signature), (ii) implement a so-called hash digital summary which confers a safe way to protect the registered software and (iii) standardize the rates of all software services (reducing most of the official fees).
The EPO and Brazil launched a joint Patent Prosecution Highway (PPH) pilot program to enable work-sharing and accelerate patent prosecution at both offices, with the aim of improving the global IP system, supporting applicants and encouraging innovation.
It will initially run for two years and will entitle applicants, whose claims have been found to be patentable by either the EPO or INPI, to ask for accelerated processing of their corresponding applications, pending before the other office.The Brazilian Patent Office recently issued a resolution regulating the scope of the PPH. It will start December 1st and will be in force for 2 years.
There will be a limit of 300 petitions accepted per year and limited to a patent family first filed in Brazil of the EPO.
The applications have to be within the following technologies: basic chemistry; organic chemistry; fine chemicals; macromolecular chemistry and polymers; medical technology.
Finally, there are certain additional requirements that need to be met:
- Filing must have been published/application must have been disclosed.
- Examination must have been requested.
- A response to an office action in Brazil cannot be pending.
- Annuities must be paid.
- No other priority examination request must have been granted.
- The patent cannot be the object of litigation.
- The application cannot be a divisional one (with one exception: that the divisional comes from the original application, consequence of a lack of unity objection raised by the Office of Earlier Examination).
Similarly, on November 13th, the Brazilian Patent Office and the Chinese Patent Office signed a memorandum of understanding, setting up the basis for a PPH program pursuant to which applicants will be able to seek for an accelerated examination whose Chinese/Brazilian counterpart has been already approved.
The PPH program is expected in the near future and we will keep you posted of any developments. As of today, it is expected to cover the following areas: IT, packaging, measurement and chemistry. In addition, the INPI has recently entered into discussions regarding the institution of Geographical Indications for EU countries.
This has been a point of contention for the Brazilian bloc, but talks are underway as of last week which may bring the additional protection to specification of certain products which are attached to specific European locales.
Some opposition has been noted, specifically in some cases as outlined below:
- GI may conflict with existing plant variety / animal breeds, which would prove impossible to define the origin of the product.
- The GI may conflict with acquired rights, which would cause possible interference.
- The GI may conflict with an identical or similar name already registered or with registration in process for the same product or similar, which would prejudice the decision to purchase by the consumer.
- The GI may conflict with generic name or common use in Brazilian product, necessitating in this case, that the use in good faith and the date of beginning of production must be proven.