Brazilian patent application

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Release time:2016-05-13

1.Priority Acceptance and Examination of Invention Patent Application

The National Institute of Industrial Property of Brazil provides for the priority acceptance and examination of three situations:

(1) the applicant for the patent is over 60 years of age;

(2) The object of the patent application has been imitated by a third party without the permission of the applicant;

(3) The patent to be applied for is subject to financial assistance from the Government or a relevant body (Decision No. 132/06 of the State Industrial Property Office, Article 2 (a), (B) and (c)).

In addition to the above three conditions, if the patent applicant accuses a third party of imitating the object of the patent application, and the third party believes that the patent applicant's application should not be protected by law, then the third party may also apply for priority to the patent application. Request for acceptance and examination (Decision No. 132/06 of the State Industrial Property Office, Articles 4 and 5).

 

  Disclosure, Modification and Authorization of Invention Patent Application

An application for a patent for an invention filed with the National Institute of Industrial Property of Brazil will have a confidentiality period of 18 months from the date of filing or the date of obtaining the right of priority ("Industrial Property Law", Article 3 Preamble). After the expiration of the period, the application will be made public, unless the application relates to military secrets or affects national security.

The Brazilian National Industrial Property Office makes public the application for a patent for an invention, including a descriptive report of the invention, claims, design illustrations, etc. An application for a patent for an invention related to biotechnology also requires sufficient description and the attached deposit will also be disclosed (Article 30 of the Industrial Property Law).

Once the invention application is published, during the publication period, any interested third party can submit useful documents and information (Article 31 of the Industrial Property Law) to the Brazilian National Industrial Property Office (for example, prior art, etc.) as a review support document.

Patent applicants have 36 months to revise the application materials from the filing of the application. If the technical review has already begun, the Brazilian National Industrial Property Office only allows the applicant to make a supplementary description of the claim, and does not allow the addition of new claims. After this period, the applicant or interested third party can only request the Brazilian National Institute of Industrial Property to review its request. If it is rejected, it can also request reconsideration once within 60 days (Articles 32 and 33 of the Industrial Property Law).

Once a patent application enters the technical examination process, the Brazilian National Institute of Industrial Property publishes a report stating the patentability of the patent application. If the Brazilian National Institute of Industrial Property considers that the patent is not suitable for authorization, or that there is a problem in the field of application, or that new information needs to be provided, the patent applicant has 90 days to express his or her views. If it does not comply with the requirements of the Brazilian National Institute of Industrial Property, the patent application will be rejected (Article 36 of the Industrial Property Law).

After the information required by the State Industrial Property Office is submitted, the technical evaluation stage of the patent application is completed, and the State Industrial Property Office will make a decision to authorize or not to authorize the patent (Article 37 of the Industrial Property Law). If the State Industrial Property Office agrees to grant a patent, the right holder shall pay the patent fee within 90 days after the authorization, otherwise the patent will be invalid. After payment of the patent fee, the patent right will be officially granted (Industrial Property Law, Article 38).

 

  Authorization Conditions

In Brazil, an invention patent application is granted subject to the following conditions:

(1) It is an object for which a patent may be granted.

The following are objects that are not protected by patent law (Industrial Property Law, Articles 10 and 18):

discoveries, scientific theories and mathematical methods;

a purely abstract concept;

Ideas, plans, principles or methods used in accounting, finance, education, advertising, gambling or monitoring and business methods (but the National Industrial Property Office (INPI) may grant patents for business methods. In order to obtain patent protection in the business method, the applicant must declare that the implementation of the method has a new technical effect, not just an economic effect. In other words, the relevant methods may not consider financial, commercial and statistical factors in the application. For example, cryptographic methods for bank accounts can be patented, while methods for online transactions cannot);

literary, architectural, artistic and scientific works, or any other creation with an aesthetic view;

the computer software itself;

Presentation of information;

Rules of the game;

Creations that violate public order and good customs;

Methods of diagnosis and treatment of diseases applied to humans or animals;

Organisms or biological substances in nature, or products isolated therefrom, including genes of any organism or biological process or bacterial protoplasm;

An individual organism or a part thereof (but if the genetically modified microorganism found by accident meets the three conditions of innovation, creativity and industrial application value, the patent right can be granted);

A substance obtained by means of nuclear transformation.

(2) It contains three elements of patent: novelty, creativity and practicality.

① Novelty

When the claims of a patent application are not part of the latest available technology, the Brazilian National Institute of Industrial Property defines the invention as "new". Brazil adopts the concept of absolute novelty, and the existing technology for comparison includes everything that is available to the public, whether in Brazil or not, in any form, as long as the time is before the time indicated in the patent application or document (Industrial Property Law, Article 11).

The Brazilian National Institute of Industrial Property requires that whether an invention is novel depends on whether all its elements have been disclosed, including the preamble and the detailed description of the application. Therefore, a document partially disclosing a patent application does not deprive the patent application of its novelty.

② Creativity

The Brazilian National Industrial Property Office requires examiners to examine patent or priority applications filed by professionals in a field, focusing on whether professionals in the technical field will "naturally" obtain the technical solution of the application.

The Brazilian National Institute of Industrial Property has developed an element form that allows examiners to assess the inventiveness of the patent applied. The table mainly includes the following contents:

a. There is a technical link. Through the comparative analysis of the comprehensive data, it can show the advanced nature of the applied invention;

B. the existing technical problem which needs to be solved and has been difficult to solve for many years, and the claimed invention is intended to solve this problem;

c. The solution provided by the invention is fundamentally different from the general behavior in the field;

d. For the invention applied for, professionals in the same field will not think of it;

e. Commercial success can be achieved if the technical features of the invention are combined (General Guide to Patent Examination, 1.9.2.2).

③ Practicality

According to the Brazilian National Industrial Property Office, industries cover agriculture, extractive industries, manufacturing and industries that produce natural commodities. The General Guidance on Patent Examination (DG) of the Patent Department of the State Industrial Property Office considers that "industry" includes acts in any practical field and emphasizes that inventions must meet requirements that can be applied in the industrial field, rather than abstract principles (General Guidance on Patent Examination, 1.5.3).

(3) Other conditions to be met

A full description. The main job of the examiner of the State Industrial Property Office is to examine whether it can be implemented by professionals in the field according to the patent description. That is, the patent specification must describe the details of the application so that a person skilled in the field can complete the invention (Article 24 of the Industrial Property Law).

It does not involve legal prohibitions. The examiner will examine whether the applied patent complies with the restrictive provisions of Article 10 and the prohibitive provisions of Article 18 of the Industrial Property Law (General Guidance on Patent Examination, 1.5.2).

③ Multiple inventions in one application have a unified innovation point, and they are single among them ("Industrial Property Law", Article 22).

④ Disclosure of sources of genetic resources and traditional knowledge. For the grant of patents based on Brazilian genetic resources and traditional knowledge, the source of the genetic resources and traditional knowledge must be disclosed to the Brazilian National Institute of Industrial Property (Brazilian Provisional Regulations on the Protection of Biodiversity and Genetic Resources, Article 31).

  

Invalidation Procedure

Within six months after the grant of the patent, any interested third party or the Brazilian National Institute of Industrial Property may initiate administrative procedures for the invalidation of the patent (Article 51 of the Industrial Property Law). The patentee has 60 days to respond (Article 52 of the Industrial Property Law).

In response to the administrative decision of the Brazilian National Industrial Property Office on invalidation, the injured party may initiate normal litigation procedures to overturn the administrative review decision of the National Industrial Property Office. If the administrative review period expires, interested parties may still bring an action in the Federal Court for the invalidation of the patent in order to terminate the validity of the patent (Industrial Property Law, article 56).

 

2. utility model

 

Most of the above patents are applicable to utility models.

  Authorization Conditions

The conditions that the utility models protected by the Industrial Property Law must meet are: those that can be applied to industry, have a new form or structure, include creative activities, and do not violate the prohibitions of Articles 10 and 18 of the Industrial Property Law.

The Brazilian National Industrial Property Office believes that the utility model must have a functional improvement, which means that the utility model can improve the comfort, practicality and efficiency of the product.

Special attention should be paid to the fact that Brazilian utility models can also be creative activities, which are not naturally discovered by professionals in this field simply on the basis of existing technology (Industrial Property Law, Article 14).

The provision for judging the creative activity in the utility model is that the improvement of the activity leads to the improvement of the function of use or manufacture, facilitates the human activity or improves the efficiency.

In Brazil, utility models also need to undergo substantive technical review before they can be authorized, but the review cycle will be about two years shorter than the patent review cycle.

 

3. appearance design

  Authorization Procedure

To apply for the registration of a design with the Brazilian National Institute of Industrial Property, the following documents need to be prepared in Portuguese (Article 100 of the Industrial Property Law):(1) Application Form for Rights;(2) Explanation Report;(3) Claims;(4) Design drawings or photos;(5) Description of the application field of the article;(6) Proof payment. A design can only be an object. A design may contain up to twenty categories of objects, depending on its purpose and characteristics, and the application form must indicate the field in which the object is represented, so that experts in the field can copy it (Industrial Property Act, article 101).

In the process of applying for authorization, the applicant may request the Brazilian National Institute of Industrial Property to grant a confidentiality period of 180 days from the date of application (Industrial Property Law, Article 106). In the event that the applicant requests confidentiality, he has the right to withdraw his application for confidentiality within a period of 90 days (Industrial Property Law, article 105).

Once the design application is submitted to the Brazilian National Institute of Industrial Property, the examiner examines whether the application contains the necessary documents and whether the application is in the correct form (Industrial Property Law, Article 102). If the application meets all the formal requirements, the application will be accepted. If the application does not meet the requirements of legal procedures, but the reason is that it does not provide sufficient information, the Brazilian National Industrial Property Office will give the applicant 5 days to make a correction (Article 103 of the Industrial Property Law); If the conditions are not met or the relevant application materials are missing, the Brazilian National Industrial Property Office will require the applicant to make a correction within 60 days. If everything meets the requirements, the Brazilian National Institute of Industrial Property publishes it in the Industrial Property Bulletin (RPI) and issues the corresponding patent certificate (Industrial Property Law, Article 106).

 

  Authorization Conditions

The Industrial Property Law sets out three conditions for becoming a design: novelty, originality, and not violating public order and good customs.

A design is original if it is visually distinct from other previously known objects made of known elements. If the design is not part of the work of art, then it is "new.

Even if the design meets the conditions of novelty and originality, if it violates the public order and good customs, the good image of the third party, and violates the freedom of conscience, belief, religion, etc., the design cannot be authorized. A design cannot be authorized if its appearance is variable, commonplace, or if its appearance is primarily for technical or functional reasons (Industrial Property Act, article 100).

However, the Brazilian National Industrial Property Office will not conduct a substantive review of these three conditions for the design application, but only authorize the formal review.

 

  Conditions for Invalidation

After the registration of a design, if there is a prior right or evidence that the design lacks originality, the National Industrial Property Office of Brazil or any other interested party may file administrative or legal procedures to declare the design invalid. Thus, Brazil's substantive examination of the design was transferred to the invalidation procedure.