Articles

The Brazilian Protection of Industrial Property: Invention and Utility Model

June 25, 2016

By Catharine Black Lipp João, law student at Pontifical Catholic University of Rio Grande do Sul and intern at Carvalho, Machado, Timm Advogados (CMT) and Rafael Louzada Nardin, law student at Pontifical Catholic University of Rio Grande do Sul and intern at Cabanellos Schuh Advogados Associados

Overview

This Quick Overview seeks to clarify the industrial property (a type of intellectual property) protection in Brazil , specifically the case of item I of Article 2 of Federal Statute 9279/96 ("Statute"), related to the grant of patents of invention and utility models. The patent symbolizes an important protection in Brazilian legal system not only in the economic sphere, but also related to any type of irregular use of industrial property. Failure to comply with this protection provision can even imply a criminal offense.

Basic notions about Intellectual Property

To analyze Brazilian legal scenario concerning Industrial Property rights protection, some legal concepts adopted in the country must first be clarified. Pursuant to Article 42 of the above Federal Statute, the Brazilian legal system considers the institution of "patents" as an ownership title conferring to its holder the right to prevent unauthorized exploitation of an idea in a certain territory for a limited period of time.

Patents are divided into categories of (1) utility model and (2) invention, which are defined as follows:

1. Utility model is an innovation applied to an already existing equipment or industrial product that could result in functional advances in its use or manufacture process; and

2. Invention is something completely new, which results from advances of technical expertise that combine an inventive element and its industrial application.

Pursuant to Article 40 of the Statute, invention patents will expire 20 years counting from the deposit date, and utility model patents expire 15 years from the deposit date. The deposit can be made through the Internet, at the Web site http://epatentes.inpi.gov.br/. Other options for the deposit of an application are: (a) to physically file the application at the National Institute of Industrial Property (INPI) headquarters in Rio de Janeiro or at a division or representation of the Institute in other state capitals of Brazil; or (b) to send it by mail, with a request of return receipt, addressed to the Patent Board.

According to Article 8 of the Federal Statute 9.279/96, an invention is patentable when it meets the requirements (i) of novelty, (ii) of being the result of human inventive activity and (iii) of being the object of industrial application. According to Article 9, the utility model is patentable when the practical use object (or its parts) can have industrial application or presents a new shape or disposition that involves an inventive action and results in functional improvement for its use or manufacturing.

Article 11 of the Statute establishes a peculiar requirement to characterize the invention and utility model. Pursuant to this Article, the invention and utility model will only be considered new when they are not already contained in the scope of the current state of technique, which means that they are not made available to the public before the date of filing of the patent application, by written or oral description, by use or any other means, in Brazil or abroad.

Article 18 of the Statute lists situations in which the granting of patent will not be allowed:

If it is in any way contrary to morals, common decency and public security, order, and health;
Substances, materials, mixtures, elements and products of any kind, as well as the modification of their physical-chemical properties and the respective processes of obtaining or modifying them, when resulting from the transformation of the atomic nucleus; and
All or part of living beings, except transgenic microorganisms meeting the three patentability requirements - novelty, inventive activity and industrial application - provided for in Article 8 and which are not mere discoveries.
For purposes of the Statute, transgenic microorganisms are organisms, except the whole or part of plants or animals, that exhibit a characteristic normally not attainable by the species under natural conditions due to direct human intervention in their genetic composition.

The Acceptance of International Agreements according to Brazilian legal system

The protection of the patent granted in Brazil is restricted to Brazilian territorial limits. However, as attested by Article 3 of the Industrial Property Statute, it is possible to file patent requests in countries that have signed International Agreements with Brazil up to 12 months after filing the request in Brazil, ensuring the priority date of this first request.

Regarding the treaties of the international patent system, Brazil complies with the agreed provisions at the Paris Convention for the Protection of Industrial Property, which was implemented through Decree 635/92; the Patent Corporation Treaty (PCT) and Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) were put into force by the Federal Statute 9.279/96. Thus the foreign applicant for a patent has the same rights as the national plaintiffs of patents and the standards set in greeted Articles have equal application in the legal system, pursuant to Article 4 of Law No. 9279/96.

Requirements for Patent grant pursuant to the Federal Statute No. 9.279/96

The INPI establishes some requirements for granting a patent. When these are not satisfied, the application will be automatically filed away. If the patent application contains imprecise information concerning the object, the applicant or the inventor, INPI will establish a 30-days period for the correction of such data which, if not corrected, will also result in the shelving of this request. The INPI Normative Order No. 28670/2008 establishes the following requirements:

1. An application form: a requirement containing all the identification of the invention's holder or its solicitor.

2. A descriptive file: a very direct and precise report with sufficient knowledge of the object (and if necessary the explanation of the best way to execute it) to allow the recognition by a technician in the area.

3. Patent claims: these must be based on the descriptive report, presenting the characteristics of the request and defining the subject-matter protected by the patent.

4. The drawings (optional): to illustrate objects and procedures of the invention/utility model.

5. Summary: a concise description of the invention and utility model characteristics.

6: The payment receipt: issued by the government through the INPI (National Institute of Industrial Property) Web site.

A formal preliminary examination must be required within 36 months to be properly registered; otherwise the patent application will be temporarily filed away. In this case, the applicant can require the application to be reopened upon the payment of a specific fee. If this does not occur, the application will be definitely filed away.

The examination will not be done before 60 days of the publication of the patent application. The application can have its contents modified before the examination date. The registration can be generated at the INPI regional offices or using the electronic system.

The patent application will be confidential for 18 months from the payment date in order to promote the protection of the property. However, the publication can be anticipated by applicant's solicitation.

Whenever required, the applicant must submit within 60 days: objections, research of precedence and exam results of the application in other countries, simple translation of the document, and necessary documents to the regularization of the application.

During the technical examination, a search report and a technical note have to be elaborated regarding the following: patentability of the invention; adaptation of the nature of the application (application for an invention when it was actually an utility model); reformulation of the application or its division (if there is not a unit that characterizes a single act or a single invention activity); and technical demands (e.g. the need to convert measures to the International System of Units). If the technical note is contrary to the patentability due to the inadequate nature of the application or other demands, the applicant will be summoned through the Intellectual Property Magazine (Revista da Propriedade Intelectual) to present the requirements in 90 days. If the demands are provided for, even if not all the terms are compliant, the examination will continue. In the case there is no response from the applicant, the application will be definitely closed.

Note that for every new fact, a new technical note must be published. After the examination, the decisions will be delivered, granting or rejecting the patents' request. After the request is granted and payment has been verified, the letters patent will be issued determining the validity period. The letters patent contains number, title and nature of the invention, name of the inventor, qualification and residence of the applicant, the period of validity, the descriptive report, the claims and drawings, as well as data concerning priority. The patent's granting date will be the date of its publication in the Industrial Property Magazine (Revista da Propriedade Industrial).

Conclusion

This Quick Overview intended to objectively analyze the basic aspects of Brazilian legislation concerning the protection of industrial property (invention and utility model) and its requirements for granting patents. The relevance of this topic relates to the possible difficulties that investors will face when trying to obtain legal protection of their industrial properties in Brazil. Therefore, all companies that may have financial interests in Brazil should be aware of the specific requirements that Brazilian legal system imposes.

Additional Resources

Region: Brazil

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