NEWS JANUARY 2020 - DECEMBER 2020
BRAZIL
December 02, 2020
The Brazilian PTO published, in its Official Bulletin No.2604, dated 1 December 2020, a review of the Guidelines for the Examination of Biotechnology patent Applications.
The purpose of this new version is to update and detail the current Biotechnology Guidelines. The Brazilian Guidelines setting out the understanding of the BRPTO on Biotechnology Inventions were firstly published on 12 March 2015, using Rule 144/2015. However, after a public consultation carried in 2019, the Brazilian PTO has reviewed said Guidelines, resulting in this updated version. The new Guidelines have come into force on 1 December, 2020.
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EU
November 30, 2020
In the recent Judgment of 11/11/2020, the CJEU ruled on an appeal for annulment against an earlier Judgment of the General Court on an issue that does not have ample precedent and that relates to the interpretation of Article 8(3) EUTMR on the opposition to new trademark applications filed by the agent or representative of an earlier trademark.
EUIPO´s Board of Appeal had upheld the opposition filed by a US company JEROME ALEXANDER CONSULTING (hereinafter JAC) against the trademark application "MINERAL MAGIC" filed by a British company JOHN MILLS (hereinafter JM).
The General Court upheld the appeal filed by JM on the basis of the claim by JM that the aforementioned provision (Art. 8(3) EUTMR) was not applicable if the conflicting signs were not identical (JAC claimed the prior existence of a trademark registered in the USA "MAGIC MINERALS BY JEROME ALEXANDER").
The deliberations of the CJEU and its rationale for revoking the earlier Judgment of the General Court are very important to address the matter at hand.
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BRAZIL
November 25, 2020
The Brazilian Health Surveillance Agency (ANVISA, in its Portuguese acronym) published, on 19 November 2020, Guidelines regarding the examination and prior consent of patent applications for pharmaceutical products and processes.
As currently required by Article 229-C of Brazilian IP Law, ANVISA continues to issue prior consent over a Patent application for pharmaceutical products or processes, since ANVISA limits its analysis to the risk of the product or process to the public health.
The aim of this Guideline is to establish a standard and clear procedure regarding the actions performed by ANVISA. This Guideline covers the procedure and is divided in four sections, one for each of 4 (four) different stages:
- Identification of patent applications for pharmaceutical products and processes which require prior consent;
- Health risk analysis in patent applications for pharmaceutical products and processes under prior consent;
- Identification and analysis of patent applications for pharmaceutical products and processes under prior consent that are subject to the offer of subsidies for the BRPTO (Brazilian Patent and Trademark Office) patentability examination; and
- Examination of patentability requirements by BRPTO of patent applications for pharmaceutical products and processes with prior consent.
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ARGENTINA
November 25, 2020
On November 24, 2020 the National Institute of Intellectual Property (INPI) published Resolution No. 194/2020 establishing the resumption of deadlines in all INPI´s proceedings as of December 14, 2020.
According to National Decree 876/2020 that established the resumption of administrative deadlines as of November 30, 2020, INPI issued the aforementioned Resolution to terminate the exceptional measure (extended on successive occasions) that suspended the course of the terms in all proceedings as of March 12, 2020. However, considering the particularities of Intellectual Property rights, INPI has granted a grace period of 15 days so that the terms can be resumed from December 14, 2020.
Please note that, in those cases that had terms running at the beginning of the suspension, only the remaining days should be counted. In those cases where the notification was served during the suspension stage, the full term will start to run from the aforementioned date.
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BRAZIL
July 28, 2020
Due to an array of initiatives from the Brazilian PTO, we gladly inform you that the backlog has shrunk in the first semester of 2020, in spite of restrictions stemming from the COVID-19 pandemic.
A Progress Report has been issued recently, addressing the performance achieved until last June, as well as the second revision of the 2020 Action Plan, with the keeping of basically all the goals foreseen for this year.
The technical examination decisions reached 20,675 patent applications, an amount equivalent to 51.6% of the planned for this year (40,092 applications) and 87.6% of all 2019 production (23,592 applications). The reduction of backlog hit 30.4% by June, indicating the great possibility of attaining the 52% forecast for 2020 and the final target of 80% reduction of the backlog in 2021. These results are a direct byproduct of one of the main strategies devised by the Brazilian PTO known as "Preliminary Office Actions".
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MEXICO
July 14, 2020
In the framework of the commitments undertaken through the Trade Agreement between the United States, Mexico and Canada (USMCA), the Federal Law for the Protection of Intellectual Property was approved on 1 July, 2020.
This new Law comprises 410 articles and 18 transitional provisions and will enter into force on 5 November 2020, repealing the current Intellectual Property Law.
Some of the most significant changes in relation to the recently published Federal Law for the Protection of Intellectual Property are the following.
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BRAZIL
July 02, 2020
In an attempt to reduce the existing patent examination backlog, and according to recent Court decisions which ordered the Brazilian Patent and Trademark Office (BRPTO) to examine longstanding cases, a series of measures have been adopted.
On June 30, 2020 the Brazilian PTO published Resolution No. 247/2020 in the Official Bulletin No 2582.
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MEXICO
June 11, 2020
As from last June 6, 2020, Mexico has joined the Hague System concerning the International Registration of Industrial Designs.
Consequently, as from such date, national applicants can already use the Hague System to protect their Industrial Designs in the territories of the 89 member countries of the above-mentioned Hague Agreement, through a single international application and the payment of the established fees.
In the same sense, foreign applicants have the option of designating Mexico to protect their Industrial Designs under the Hague System (World Intellectual Property Organization - WIPO).
It is for this reason that on June 5, 2020, the Agreement issued by the Mexican Institute of Intellectual Property (IMPI) was published in the Official Gazette of the Federation through which government fees and applicable rules and specifications for the filing of documents and prosecution of applications are disclosed.
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SPAIN
May 25, 2020
By Royal Decree published on May 23, 2020, the computation of administrative deadlines in Spain, including those of the Spanish Patent and Trademark Office (SPTO), which were suspended, will resume as from next June 1. Consequently, the SPTO will get back to normal activity from said date.
In regards to the procedural deadlines of the Courts of Justice, the mentioned Royal Decree establishes its resumption as from next June 4. Therefore, the Courts will resume normal activity from said date.
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BRAZIL
April 08, 2020
The Brazilian Official Bulletin 2570, dated 07 April 2020, published amendments to Resolution No. 239/2019, that regulates conditions on Requests for Priority Examination of Patent Applications, by means of Ordinance No. 149/2020.
The amendments provided by said ordinance aim to allow the accelerated substantive examination of patent applications related to pharmaceutical products and processes, as well as medical devices and/or materials used for the diagnosis, prophylaxis and treatment of COVID-19.
Whereas the diagnosis, prophylaxis, and treatment of COVID-19 have been specifically included due to the emergency measures and the worldwide pandemic situation, there is a specific time limit, 30 June 2021, applied only for this type of technologies.
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BRAZIL
April 03, 2020
The Brazilian Patent and Trademark Office (BRPTO) and the Korean Intellectual Property Office (KIPO) signed a Memorandum of Understanding (MoU) to launch a Patent Prosecution Highway (PPH) Pilot Program between the two Offices. It came into force April 1, 2020.
This PPH Pilot Program with South Korea will expire on March 31, 2025, being applicable to all technological fields and within the limit of 400 requests among all PTOs that have signed the MoU, according to the Resolution PR No. 252/2019.
The following requirements must be complied for an application to be accepted in this PPH Pilot Program:
- it must have been filed for at least 18 months or have a request for anticipated publication or, in case of international applications, have been published by the WIPO;
- it must have its request for examination submitted to the BRPTO;
- it must have not been accepted in any fast-track examination program and not have its technical examination initiated by the BRPTO;
- it must have not been voluntarily divided or amended by the applicant between the PPH request submission and the decision of the PPH procedure;
- it must belong to a patent family having at least the oldest patent application filed in the BRPTO or in the Earlier Examination Office, acting as a National or Regional office, or in case of PCT applications, acting as a Receiving Office (RO);
- it must belong to a patent family having an application examined by the Earlier Examination Office, acting as a National Office, and considered as comprising patentable subject matter after the technical, substantive or merit examination;
- it must belong to a patent family for which the Earlier Examination Office, acting as a National Office, has issued an allowance or granting decision; and
- it must claim the same or a more restrictive subject matter when compared to the one considered patentable by the Earlier Examination Office for the application of the same patent family. The claim chart submitted with the PPH request cannot have additional subject matter when compared with the claim chart examined by the Earlier Examination Office, even if it has a more restrictive scope of protection.
SPAIN, EU and LATAM
March 24, 2020
We are glad to present you the following annual report summarizing the main legislative Intellectual Property developments occurred in Spain, European Union (EU) and Latin America during 2019 and the beginning of 2020.z
Last year was special for UNGRIA since we consolidated our international presence through our three own offices in Argentina, Brazil and Mexico. In addition to our team in Spain and the USA, the LATAM team started to directly represent our clients before the local Offices.
Among the many relevant changes we outline below, we would like to highlight in Spain, the partial entry into force of the current amended Trademark Law, which adapted the Spanish Regulation to those belonging to the remaining European Union countries by incorporating into the national Spanish Law those provisions established by Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 and the new Trade Secret Law 1/2019.
In the EU, the entry into force of the new European Regulation (EU) 2019/933, on supplementary protection certificates (SCP) for medicinal products, the new Guidelines for Examination published by the European Patent Office (EPO), the latest news about the Unitary Patent and Unified Court and the effects of BREXIT in relation to European Union Trademarks (EUTMs).
In Latin America, especially in Argentina, where the National Institute of Industrial Property (INPI) issued different Regulations to implement the changes introduced by Decree 27/2018 and Law 27,444 in the procedures of the different Industrial Property Institutes and, in Brazil, where the implementation of the Resolutions 241/19 and 240/19 started to reduce the back-log in the patent examination procedure. Lastly, in Mexico, where the Mexican Federal Health Secretariat published a decision whereby the importation of medicines from other countries without a prior sanitary registration granted by the Federal Commission for Protection against Sanitary Risks (COFEPRIS) shall be permitted.
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MEXICO
March 24, 2020
In attention to the evolving situation surrounding the COVID-19 outbreak, the Mexican Institute of Intellectual Property (IMPI) has issued an official communication establishing the
suspension of all deadlines as from March 24th until April 19th, 2020. Therefore, all deadlines expiring within this period are passed to the first business day, that is April 20th, 2020.
Similarly, the Federal Court for Administrative Affairs, in line with the Agreement 4/2020 of the Council of Federal Judicature, has suspended activities and procedural deadlines from March 18th to April 19th, 2020.
Despite the suspension of deadlines, the Mexican PTO is working and UNGRIA Mexico remains open and fully operating for business as usual to serve your legal needs.
We will continue to inform you about any developments that may occur.
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EU
March 20, 2020
After more than two and a half years of wait, the German Federal Constitutional Court has published today its decision upholding the constitutional complaint against the German ratification of the Agreement on a Unified Patent Court (UPC). The Court´s decision (
BVerfG, Beschluss des Zweiten Senats vom 13. February 2020 - 2 BvR 739/17 -, Rn. (1-21).), from which three out of eight judges dissented, states that the Act of Approval of the UPC Agreement by the German Federal Parliament was void, as a two-thirds majority was required.
This decision constitutes a major blow to the very existence of the UPC. Ratification by Germany, UK and France was needed for the UPC to enter into force. The UK had already ratified, but BREXIT posed a major obstacle to its participation. All the more so after the British Government declared recently that it would not join the UPC because of the requirement to remain under CJEU´s jurisdiction. Today´s decision paints an even bleaker future for the UPC. Even if the Bundestag tried again to pass the Act, it would be difficult, with the current state of affairs, that a two-thirds majority agreed. And, even if it did, probably a new complaint would be lodged, since the German Court did not consider the other grounds brought up in the 2017 complaint.
We will follow the reactions to today´s decision with interest, and will keep you posted.
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BRAZIL
March 18, 2020
Let us inform you that the
Brazilian Official Bulletin No. 2567, dated March 17, 2020, published the Suspension of Deadlines from March 16, 2020, to April 14, 2020, as a safety measure due to the evolving situation surrounding the COVID-19 outbreak.
Despite the Suspension of Deadlines, the Brazilian PTO systems are fully working and UNGRIA BRAZIL remains open and fully operating for business as usual to serve your legal needs. Therefore, our practices in Brazil will not be affected due to this Suspension.
We will continue to inform you about any developments that may occur.
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ARGENTINA
March 18, 2020
In accordance with the health emergency declared in Argentina due to the COVID-19 outbreak, the National Institute of Industrial Property (INPI) has joined the adoption of extraordinary measures. Today, the
INPI´s Resolution No.16/2020 was published in the Argentine Official Gazette establishing the suspension of all deadlines as from March 12th until April 3rd, 2020. This suspension can be extended if the causes that motivated such measure subsist.
Notwithstanding the above, all the filings that the applicants have made or will make within the original term will be deemed timely performed.
Additionally, please be informed that UNGRIA ARGENTINA and the INPI are fully operating and filings can be done online or in person. However, its staff is reduced and the days of attention to the public will probably be limited to a few days.
We will continue to inform you about any developments that may occur.
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SPAIN
March 15, 2020
First of all, we want to communicate to all our clients, suppliers, colleagues and business associates that, in these times of crisis due to the evolving situation surrounding the COVID-19 outbreak, our first concern is the safety and well-being of our environment and employees. In this sense, we are following all the hygienic and safety measures recommended by the Government of Spain regarding the environment in our offices, without having any negative impact among our staff.
At this time, all UNGRIA´s eleven offices in Spain, as well as the three in Latin America (Mexico, Brazil and Argentina) and the USA remain open and fully operating for business as usual to serve your legal needs, preserving the rights and interests of our clients. If the outbreak results in the need for the temporary closure or reduced staffing of any of our offices, we are implementing contingency plans to enable uninterrupted service at the levels you have come to expect from us. As of right now, part of our team is fully working remotely and, if necessary, this scenario can be implemented for all members immediately. This allows us to continue providing our services as per usual while conducting any necessary meetings through telematic means.
We want to take this opportunity to report that the Government of Spain has just issued a Royal Decree (463/2020) of March 14th, establishing the State of Alarm in the country, adopting several measures to respond to the COVID-19 outbreak. Within these measures, and in relation to our business activity, it is established that as long as this situation persists, all procedural deadlines in front of any Court or Jurisdiction (except those that are classified as extremely urgent) are suspended. Similarly, all administrative procedures´ deadlines are also suspended, affecting every procedure to be followed by the Spanish Patent and Trademark Office (SPTO).
Lastly, we would like to send our best wishes to our clients, suppliers, business associates and colleagues during this difficult time.
We will continue to inform you about any developments that may occur.
MEXICO
February 06, 2020
This past 28 January 2020, the Mexican Federal Health Secretariat published a decision whereby the importation of medicines from other countries without a prior sanitary registration granted by the Federal Commission for Protection against Sanitary Risks (Comisión Federal para la protección Contra Riesgos Sanitarios- COFEPRIS) shall be permitted.
The fundamental arguments for the issuance of said decision are the following:
- To guarantee the correct provision of services by means of establishing a system to control the supply of medicines and their raw materials for health.
- To allow the purchase of medicines in any country around the world to prevent the shortage of supplies as occurs, for example, in the case of cancer medicines in other countries.
- To increase the stocks of medicines, which helps to reduce monopolies.
This decision allows foreign companies to import medicines that have not been granted a sanitary registration issued by the Mexican authorities.
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EU
January 15, 2020
The General Court of the EU has just issued a decision dated December 18, 2019, within case T-624/18, that may be considered as particularly important due to the therein included criticisms concerning EUIPO´s resolutions and the need to have them substantiated.
In the current case, EUIPO rejected trademark application GRES ARAGÓN, including a slight stylized lettering, for ceramic products in class 19. It was considered that said trademark was included in the prohibitions of article 7, paragraph 1, sections b) and c), and of Article 7, paragraph 2, of Regulation 2017/1001 EUTMR. The appeal filed by the applicant before the EUIPO was also supported by evidence showing the distinctive character acquired by the use of this sign, also rejected by the Board of Appeal, so that the applicant filed a further appeal this time before the General Court. EUIPO considered that the filed trademark application included the words "gres" and "Aragón" represented in slightly stylized capital letters, but perfectly understandable by the Spanish-speaking consumers as designating a ceramic material (grés) coming from the region of Aragon. As a consequence, the relevant public would not be able to appreciate the distinctive character of this trademark application.
In its Judgment of last December 18, 2019, the Court accepted the applicant's appeal, appearing the grounds set forth in said judgment to be of most importance at a general level.
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