Patent Prosecution Strategy in Brazil by Igor Simões

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PATENT PROSECUTION STRATEGY IN BRAZIL

Igor Simões

© 2011 Clarke, Modet & Cº

BRAZIL


Population193,946,886

Surface8,515,767 km2

Inflation 5,84% (2012)

Gross Domestic Product (PIB) US$ 2,367 trillions (2011)

PIB per capitaUS$ 12,144 (2011)

Unemployment rate5,4% (September 2012)

Brazil


Brazilians have seen changes in the Brazilian Regulatory Framework for the Electricity Business, forced control of gasoline prices and expansion of domestic credit.

Brazil's Finance Minister, Mantega, expects GDP results for 2013 would show growth of at least 4%.

Brazil leads the ranking of attractiveness for establishing operations in Latin America.Source: VALOR ECONÔMICO NewspaperAugust 8th, 2012

Brazil 2012 Facts - Overview

Brazil is the second most popular destination in the world in value of FDI (foreign direct investment) and fifth in number of projects.

Global FDI (US$ trillions)

Source: UNCTAD

Brazil has experienced payroll exemption for many sectors, fall of the Selic rate at its record low, tax reduction and reduction in banking spreads.


Coprights: FernandoAH

Brazil - Opportunities

A growing middle class, strong domestic demand and great unexplored reserves of natural resources.

Government policy incentives, simplification of licensing procedures and the regulatory environment.

Brazil will host the 2014 FIFA World Cup and the 2016 Olympics.

A large domestic market and growth path of long-term.

Source: VALOR ECONÔMICO NewspaperAugust 8th, 2012


Source: THE ECONOMIST. Print EditionNovember 3rd, 2012

Today Brazil’s laws on patents, copyright and trademarks are in line with other big trading nations.

Software and music piracy is slowly declining in Brazil.

The discovery of oil in ultra-deep waters offshore has helped to change attitudes.

Firms drilling in the new fields must spend 1% of gross revenues locally on research and development.

More judges now understand intellectual-property law, and an appeal court has been set up in Rio de Janeiro to handle such cases.

2004 law granted universities greater rights to exploit spin-offs from publicly funded research.

Brazil 2012 – IP Developments


PATENT PROSECUTION


Novelty

Inventive Step

Industrial Application

Sufficient Description (?)

Invention 20 years from the filing date OR 10 years from the date of grant, which is the longer*

Utility Model

15 years from the filing date OR 7 years from the date of grant, which is the longer

Term of Protection & Patentability Requirements


▪ Product;

▪ Process;

▪ Product directly obtained from a process (product by process claims) - ?

▪ Use claims

▪ Second use claims?

• Mechanisms of action

• Relationship between therapeutic activity and chemical structure

• Etiologies of target diseases

▪ Polymorphs?

Protection


The following are not considered to be inventions or utility models:

I - discoveries, scientific theories and mathematical models;

II - purely abstract concepts;

III - schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature;

IV - literary, architectural, artistic and scientific works or any aesthetic creation;

V - computer programs per se;

VI - presentations of information;

VII - rules for games;

VIII – operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body; and

IX - natural living beings, in whole or in part, and biological material, including the genome or germ plasm of any natural living being, when found in nature or isolated therefrom, and natural biological processes.

Protection


Challenges in the Patent Prosecution

Amendments

Due to a “strict” position adopted by the Brazilian Patent Office, any amendment that extend or change the scope of protection of the invention, performed in the set of claims after requesting examination, is being objected by the BRPTO. Divisional applications?Best/Safest Practices


Challenges in the Patent Prosecution

Backlog Patent applications filed in ~2002 are starting to be examined-New team of examiners (2013)- 5 different lines for examination: 1. Utility models2. First filing in Brazil (non PCT)3. PCT with Brazil as International Authority4. other PCTs5. e-PEC applications (Argentina, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname, Uruguay

First choice in the lines: priority examination, green patents (pilot), preliminary opinion on patentability (pilot)


ANVISA


New Prosecution Flow for Pharma related inventions


ANVISA – public consultation

The patent application is considered contrary to public health when:

I - The pharmaceutical product or process involved in the application is a risk to health;

II - The product or process is of interest to pharmaceutical policies for access to medicines and pharmaceutical care within the SUS and does not meet the patentability requirements and other criteria established by the IP Law


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Patent Prosecution Strategy in Brazil by Igor Simões

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