NEWS JANUARY 2023 - DECEMBER 2023
BRAZIL
December 14, 2023
In a strategic move aimed at improving the efficiency of the patent system, the Brazilian Patent and Trademark Office (BRPTO) has announced a significant procedural amendment designed to accelerate patent decisions.As from January 2024, patent applications pending substantive examination will be reorganized based on the date of request for examination rather than the filing date.
This strategic change is not just a procedural adjustment; it represents Brazil's alignment with international best practices. The decision is a direct response to the results of the Public Hearing on Subsidies No. 1 of 2023, underlining BRPTO's commitment to remain at the forefront of global patent standards.
The BRPTO believes that this measure will not only enhance the overall patent procedure but also empower innovators and, ultimately, contribute to a more dynamic and responsive Intellectual Property ecosystem in Brazil.
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USPTO-MEXICO
November 28, 2023
On November 13th, 2023, the Mexican PTO (IMPI) released guidelines for the Accelerated Patent Grant Agreement (APG), a joint effort by the USPTO and IMPI designed to speed up the patent granting process. Under this program, qualifying patent applicants who have already received a U.S. patent from the USPTO may choose to expedite the process of obtaining a corresponding patent in Mexico.
IMPI is responsible for implementing these guidelines, effective on the date they are signed and issued.
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BRAZIL
July 10, 2023
On July 4, 2023, the Brazilian Patent and Trademark Office (BRPTO) published Ordinance No. 25/2023, which establishes procedures for Industrial Design designations and registrations for Brazil under the Geneva Act of the Hague Agreement concerning the International Deposit of Industrial Designs.
The Hague System will come into force for Brazil on August 01, 2023.
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US
June 15, 2023
On June 8th, 2023, the Supreme Court of the United States issued a sentence where the application of the so called "Rogers Test" (Rogers v. Grimaldi, 875 F. 2d 994, a threshold test developed by the US Second Circuit with the aim of protecting the freedom of speech rights of the US Constitution´s First Amendment, in a trademark context) has been debated with regard to the application of the trademark law in the United States (Lanham Act).
The dispute has occurred between the entities VIP PRODUCTS, LLC (defendant) and JACK DANIEL'S PROPERTIES INC (plaintiff), as a result of the promotion by VIP PRODUCTS of a chewable toy for dogs, which represents the image of a JACK DANIEL'S whiskey bottle.
The case focuses on the Lanham Act, which prohibits using a trademark that may cause a risk of confusion among consumers, and the US Constitution's First Amendment, which protects forms of parody and satire as necessary elements of freedom of speech.
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ARGENTINA
June 08, 2023
As of June 12, 2023, it will be possible to request the partial revocation of trademark registrations due to lack of use, which will cause a significant change in the current practice, causing a great impact on trademark registration strategies.
In 2018, Law 27,444 introduced several changes to the Law on Trademarks and Trade Names. A noteworthy amendment was the incorporation of the possibility of requesting the partial revocation of trademark registrations, ex officio or upon request of third parties; however, a 5-year grace period was established to start filing these requests, a period that will end shortly.
The partial revocation of a trademark registration will apply to those products or services protected by the registration for which the trademark has not been used within a period of 5 years prior to the filing of the revocation request. The revocation will not apply if the trademark was used to identify related or similar products or services, even those included in other classes, or if it is part of a trade name related to the products or services protected by the registration. The revocation request may be filed against both new trademark registrations and renewals.
This new incorporation to the Law, represents a substantial amendment with respect to the current practice. Previously, the use of a mark to identify any product or service, even those included in other unrelated classes, would suffice to comply with the use requirement and avoid a revocation action. This allowed trademark holders to obtain the registration of defense trademarks in classes without any relation to the products or services for which the trademark was used. This practice hindered the registration of marks that could peacefully coexist in the market without causing any risk of confusion amongst consumers. The partial revocation of trademark registrations is a new and powerful tool that will avoid these obstacles.
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EU
May 24, 2023
The entry into force of the unitary patent has been discussed for some time. However, there seems to exist still a certain degree of unawareness regarding this issue among a large number of European patent owners.
Making a brief summary, and in broad terms, it can be said that the unitary patent is sustained on two fundamental pillars:
- The creation of a European patent with unitary effect in all the participating countries, and
- The creation of the Unified Patent Court (UPC), with exclusive jurisdiction for disputes related not only to these new unitary patents, but also to “classic” European patents, both future and existing ones.
In relation to the first topic, the European patent with unitary effect, owners with patents granted after June 1st can request before the European Patent Office (EPO) the unitary effect of their patents in all the countries that have ratified the Agreement on a Unified Patent Court (UPCA) at that time. To date, they are 17: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. The request for the unitary effect has to be filed within one month from grant, and will comprise just one request and a unified annuity payment.
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BRAZIL
May 18, 2023
The Brazilian Patent and Trademark Office (PTO) issued technical note BRPTO/CPAPD No 01/2023 on May 9, 2023, intending to provide technical rules to be followed by PTO examiners when analyzing the patentability of inventions linked with transgenic plants; particularly, to processes of genetic transformation, known as elite events.
Related Background: According to the provisions of Article 10 (IX) of the Brazilian IP Law # 9,279/96, natural living beings (animals and plants), in whole or in part (such as cells), as well as biological material, when found in nature or isolated therefrom, are not considered to be inventions. Further, Article 18 (III) of the IP Law excludes from patent protection natural living beings, in whole or in part, even if modified/recombinant – it is only possible to seek protection for transgenic microorganisms.
Since the current Biotechnology Guidelines do not fully cover this matter, the Brazilian PTO published a first technical note in March 2022 clarifying the patentability requirements for inventions related to transgenic plants, particularly transgenesis processes, which are named elite events, and issued a Public Consultation to review such subject matter.
The current Technical Note commented herein is the outcome of Public Consultation No. 01/2022, in which opinions and recommendations from users were received and analyzed by the Expert Technical Group.
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