Scope and ownership of patentsTypes of protectable inventions
Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?
According to article 2 of the Brazilian Industrial Property Law (BIPL), the protection of rights relating to industrial property, taking into account the interests of society and the technological and economic development of the country, is effected by means of the grant of patents of invention (article 8 of the BIPL) and utility model patents (article 9 of the BIPL).
In article 10, the BIPL established that schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature; computer programs per se; and operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body, are not considered to be inventions or utility models.Patent ownership
Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?
According to article 88 of the BIPL, an invention or utility model will belong exclusively to the employer when it results from work performed in Brazil in accordance with an employment contract, the object of which is research or the exercise of inventive activity or when the invention or model results from the nature of the services for which the employee was hired.
However, article 90 of the BIPL states that an invention or utility model developed by an employee will belong exclusively to the employee if it is unconnected to his or her employment contract and when it does not result from the use of resources, means, data, materials, installations or equipment of the employer.
An independent contractor may be deemed equivalent to an employer when it pays the developer (employee) to produce the invention. The employee will always need to be appointed as the inventor.
When there are multiple inventors, all of them must be appointed as inventors. Ownership of the invention will depend on the specific circumstances of the case. Article 6 of the BIPL states that the author of an invention or of a utility model is legally entitled to obtain a patent that guarantees him or her ownership, under the terms established by this law. Further, paragraph 3 of this article states that, when an invention or utility model is created jointly by two or more persons, the patent may be applied for by all or any one of them, by naming the others to guarantee their respective rights.
Regarding inventions resulting from a joint venture, ownership will depend on the specific terms set in the agreement. In the absence of ownership provisions, the invention will be jointly owned by the parties of the joint venture.
Finally, patent ownership is officially recorded at the time of a patent filing before the Brazilian Patent and Trademark Office. However, if ownership changes, it is possible to have the assignment recorded. A simple assignment document, signed by both parties, notarised and legalised, is necessary for this purpose.
Patent office proceedingsPatenting timetable and costs
How long does it typically take, and how much does it typically cost, to obtain a patent?
The Brazilian Patent and Trademark Office (BPTO) has a backlog of patent proceedings. At present, an application takes an average of eight-and-a-half years to be granted or denied. However, the BPTO is implementing several procedures to reduce the backlog and expedite the final decisions.
It is difficult to estimate the cost of obtaining a patent in Brazil, since there are many factors (eg, number of claims, eventual office actions and the annuity payments after granting).Expedited patent prosecution
Are there any procedures to expedite patent prosecution?
Currently, there are three different types of BPTO procedures to expedite patent prosecution.Article 2 of Resolution 151/2015 provides:
Article 2: The expedited examination of the application may be requested:
I by the applicant when:
(a) the applicant is over 60 years of age;
(b) when the object of the application is being reproduced by others without his consent;
(c) the granting of the patent is a condition for obtaining financial resources from official national credit institutions, as an economic subsidy, financing or partnership, or originating from investment funds, for the use of the respective product or process; or
(d) the applicant is a person with physical or mental disabilities or serious illness (according to article 69A of Brazilian Law 9,784).
II by third parties, when they are being accused by the applicant of reproducing the object without the applicant’s consent.
III by third parties, patent applicants or patent owners who own the granted technology.
Patent Prosecution Highway (PPH)
On 19 November 2015, the BPTO signed a PPH pilot programme with the United States Patent and Trademark Office (USPTO) for examination of patent applications. The pilot programme ran for two years (from 11 January 2016 to 10 January 2018). After this first experience, the Brazilian PTO has signed PPH agreements with the European Patent Office, regarding chemistry and medical devices inventions; the China National Intellectual Property Administration (CNIPA), related to information technology, packaging, measuring and chemistry inventions; the Japanese Patent Office, exclusively for IT inventions; and South American countries, in a project named PROSUR, which includes Argentina, Chile, Colombia, Costa Rica, Ecuador, Paraguay, Peru and Uruguay.Resolution 153/15
This resolution was signed on 28 December 2015 by the BPTO in order to introduce the Brazilian Patent Priority pilot programme, which prioritises the examination of patent applications originating in Brazil and subsequently filed abroad.Patent application contents
What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?
According to article 24 of the Brazilian Industrial Property Law (BIPL), the specification of the patent application must describe the subject matter clearly and sufficiently so as to enable a person skilled in the art to carry it out. The application must, when applicable, indicate the best mode of execution.
Furthermore, the guidelines (directives) issued by the BPTO on the examination of patents stipulate that the disclosure must clearly identify the novelty of the invention or utility model and highlight the achieved technical effect (patents of invention) or the achieved new shape or arrangement (utility models).
The description must contain the characteristics of the claims, namely it must sustain the set of claims completely and unequivocally.Prior art disclosure obligations
Must an inventor disclose prior art to the patent office examiner?
Normative Instruction No. 030/2013 establishes that the description of a patent application filed in Brazil must describe the prior art that could be considered relevant for the comprehension, search and examination of said application, citing, whenever possible, the documents that contain such information highlighting the existing technical problems.
Exceptions to this regulation are:
- the absence of detectable prior art at the time of filing, which can be corrected by providing information at a later stage;
- the invention is a modification or improvement of a process or conventional device; and
- if there is absolutely no information available.
May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?
The BIPL does not foresee the possibility of a later application to pursue additional claims to a previously filed invention. However, it is possible to file a certificate of addition to protect an improvement or development added to the subject matter of the patent of invention, even if lacking inventive activity, provided that it shares the same inventive concept. This certificate of addition is accessory to the patent and has the same expiry date. It accompanies the patent for all legal effects.
On the other hand, article 17 of the BIPL establishes that an application for a patent of invention or for a utility model originally filed in Brazil, without a priority claim and not yet published, will guarantee a right of priority to a later application in respect of the same subject matter filed in Brazil by the same applicant or by his or her successors, within the period of one year (known in Brazil as ‘internal priority’).
Even as a useful option to file a new application over an already filed application, this Brazilian internal priority will only be recognised for the subject matter that is disclosed in the earlier application and will not extend to any new matter that is introduced. The pending earlier application will be deemed definitively shelved and the patent application resulting from the division of an earlier application cannot serve as the basis for a priority claim.Patent office appeals
Is it possible to appeal an adverse decision by the patent office in a court of law?
Yes, in the event of a rejection decision being maintained at the administrative appeal stage of the BPTO, further action to contest the BPTO’s opinion may be filed before a federal court.Oppositions or protests to patents
Does the patent office provide any mechanism for opposing the grant of a patent?
Yes, according to article 51 of the BIPL, an administrative nullity procedure may be commenced ex officio or by third parties having legitimate interest within six months, commencing with the grant of the patent.Priority of invention
Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?
Brazil follows the first-to-file principle. According to article 7 of the BIPL, if two or more authors have independently devised the same invention or utility model, the right to obtain a patent will be assured to whoever proves the earliest filing, independently of the dates of invention or creation. This article establishes that the withdrawal of an earlier filing without producing any effects will give priority to the first subsequent filing.Modification and re-examination of patents
Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?
Article 46 of the BIPL rules that a patent is null when granted contrary to the provisions of the BIPL. According to article 49, in the event of the right to obtain a patent (article 6) not having been observed, the inventor may alternatively claim, in a court action, the adjudication of the patent.
The BIPL also makes provision for an administrative nullity procedure, which may be instituted ex officio or at the request of any person having a legitimate interest, within six months of the grant of the patent.
Another possibility given by the BIPL is to request the nullity of a patent by means of a nullity court action. It can be filed at any time during the term of a patent by the BPTO or by any legitimately interested party, and can be asserted, at any time, as matter for defence.
It is not possible to amend a claim once the patent has been granted but it is possible to revoke the patent entirely or remove one or more claims (in cases in which the legal requirements were not met by the entire patent or by specific claims) by means of an administrative nullity action (to be filed before the BPTO) or a nullity court action (to be filed before a federal court).Patent duration
How is the duration of patent protection determined?
On May 17, 2016, the Brazilian Attorney General presented to the Federal Supreme Court Direct Action of Unconstitutionality (ADI) 5529, questioning the constitutionality of the establishment of a minimum term of validity for patents of inventions and of utility models, which was a rule prescribed in the sole paragraph of article 40 of the Brazilian Industrial Property Law (BIPL – Law No. 9,279/96).
According to article 40 of the BIPL, a patent of invention will have a term of 20 years and a utility model patent a term of 15 years, as from the filing date. However, the sole paragraph of article 40 established a minimum patent term of 10 years for patents of invention and seven years for utility model patents, counting from the date of grant.
On May 12, 2021, the judgment of ADI 5529 was finalized when the Federal Supreme Court decided that the rule in the sole paragraph is unconstitutional and, by eight votes to three, accepted the proposal of Reporting Justice Dias Toffoli, whereby the effects of the decision will not affect patents granted before the date of publication of the judgment records, except in the following cases: (i) patents discussed in ongoing lawsuits having as an object the constitutionality of the sole paragraph, and (ii) patents that are in force with a term defined by the sole paragraph, concerning patents related to pharmaceutical processes, pharmaceutical products, healthcare equipment and healthcare materials.
The term of validity for patents filed from the publication date of the decision regarding ADI 5529 will be that prescribed in article 40, ie, 20 years for patents of invention and 15 years for utility model patents, as from the filing date. On the other hand, the patents granted before the publication date, which fall within the categories indicated in items (i) and (ii) above, will have their term of validity adjusted.
Following the decision of the Federal Supreme Court, the Brazilian PTO (BPTO) will publish the correction of the patent term in the Official Gazette. From the date of such publication, the owner of a patent will have a 60-day period to request the revision of the BPTO’s decision. If the BPTO does not accept the revision request, the owner will be allowed to file an appeal against such rejection decision within another 60-day period.
It is also important to highlight that in 2019, the Patent Department of the BPTO initiated a Backlog Combat Plan aiming to reduce by 80 per cent by 2021 the number of applications filed by 31 December 2016 still under examination and pending decision. In 2020, the BPTO published decisions regarding 51,743 patent applications, reducing the backlog by 51 per cent. Until the end of 2021, the BPTO expects to issue decisions on 30,000 patent applications, therefore achieving the reduction goal of 80 per cent of the backlog.
In addition, it is worth mentioning that, on March 30, 2021, the BPTO published Ordinance No. 21/2021, which allows patent applications with filing dates up to 31 December 2017, to be eligible to receive preliminary office actions and to optimize their examination by the BPTO. Ordinance No. 21/2021 then entered into force on 1 April, 2021. This ordinance was published further to former Resolutions No. 240/2019 and No. 241/2019 of 9 July 2019, within the project for combatting the internal backlog of patent applications pending technical examination. Similar to Resolutions No. 240/2019 and No. 241/2019, Ordinance No. 21/2021 sets forth requirements for a patent application to be qualified to receive a preliminary office action, as follows: (i) not having been submitted to the first technical examination carried out by the BPTO; (ii) not having been subject to a fast-track examination request within the BPTO; (iii) no third-party observations should have had been presented by any third party or by ANVISA (the Brazilian Food and Drug Administration Agency); (iv) having a corresponding application with prior art searches conducted by patent offices from other countries, international or regional organizations; and (v) having a filing date of between 1 January 2017 and 31 December 2017. Upon responding to the preliminary office actions, applicants will be requested to (i) submit arguments showing the irrelevance of the prior art documents cited in a search report appended to the technical report, construed by the BPTO based on the examinations conducted by foreign patent offices for corresponding applications and/or, if appropriate, (ii) submit a new set of claims adapted to the cited prior arts. Applicants will have 90 days from the notifications' publication in a weekly issue of the Industrial Property Gazette to respond to the preliminary office actions under penalty of the BPTO setting them permanently aside.
Law stated dateCorrect on
Give the date on which the information above is accurate.
12 March 2021.