Recent News and a reminder regarding patent prosecution in Brazil

September 2020

This month of September/2020 has started with news from the Brazilian Patent and Trademark Office as regards to patents.

Priority Examination

Two additional priority examinations have been allowed as of September 1st which are for (i) applications with technology resulting from public funding and (ii) applications for process with technology already available on the market. The mainly benefit for those applications eligible for the priority examination route is the timeframe for analysis that is currently in about 13 months.

Brazilian PTO currently has 16 types of priority procedure available, being 14 for the general public and two for public entities. The previous one has been allowed in June/2020 for applications related to “pharmaceutical products and processes and equipment and / or materials for use in health, for the diagnosis, prophylaxis and treatment of COVID-19”.

These actions giving priority to those subjects evidences the Brazilian PTO efforts to ensure the protection of Industrial Property with quality, speed and efficiency, with the objective of contributing to the country’s innovation, competitiveness and economic growth.

IP Marketplace and IP Showcase Project

On September 3rd, the Brazilian PTO announced entering the IP Marketplace. Developed by the DKPTO the IP Marketplace is an international platform for the purchase, sale and licensing of IP rights. The website works as a showcase for brands, patents and industrial designs having 6 thousand users registered from 157 different countries.

Perhaps influenced by the Danish, on September 15th the Brazilian PTO announced the launch of the IP Showcase project for the commercialization of patent applications or granted patents in order to facilitate the technology transfer and the licensing of industrial property assets. The showcase will be available as of October 1st. According to the PTO “those interested in new technological solutions will be able to identify those that are available for commercialization, while the developers of these technologies will have the possibility to exhibit their products on a platform specially developed by the Institute”.

Don´t Forget: Amendments to Set of Claims

By the way, since we are talking about patent examination, please let us remind you that claim amendments in Brazil need to be restricted to subject matter comprised in the claims available at the time of examination.

During a patent application with the BPTO, the Applicant usually has to make changes to the set of claims. However, it is important to keep in mind the deadline set forth by article 32 of the Brazilian IP law, that is, voluntary changes in the set of claims of a patent application are only allowed by the examination request and if it restricted to the subject matter comprised in the application. After this, such amendments are only allowed to meet an examiner’s requirements from an official action, unfavorable opinions or rejection and within the deadline for response.

In addition, the most important issue arising from this procedure of submitting amendments to set of claims is that Brazil adopts a restrictive position pursuant to which such amendments in the set of claims are only accepted if they cover subject matter already available in the set of claims at the time of requesting the examination. Hence, if an amendment to the set of claims refers to subject matter which is contained in the specification/abstract but was not contained in the set of claims at the time of requesting the examination, the new set of claims will be rejected for broadening the scope of protection. So please, take this into account. The INPI is pretty strict with this.