Brazil

The Federal Republic of Brazil (hereinafter referred to as "Brazil") occupies approximately half of the territory of the South American continent, and has a population of approximately 2.154 million people, making it the 7th most populous country in the world (as of 2022). In addition, the country ranks 10th in the world in terms of GDP (2022) and occupies an important industrial position as a member of the BRICs.

Brazil has ratified the Paris Convention since its establishment, and is also a member of the WTO Agreement, PCT, and TRIPs Agreement. Additionally, since October 2019, Japan has joined the Madrid Protocol, which simplifies the international registration of trademarks.

The Brazilian Industrial Property Law has been enacted to protect intellectual property in Brazil, and it is possible to obtain rights related to patents (including utility models), designs, and trademarks.

 

 

Table 1 shows common items for each protection target. Although there are many things in common with other Japanese jurisdictions, the major difference is that a utility model examination system has been adopted, but a design examination system has not been adopted.

Table XNUMX

 

 

The following is an overview of the process from application to obtaining patent rights regarding patent applications under the Brazilian Patent Law.

Type of patent

Materials other than mathematical methods, abstract concepts, human arrangements, computer programs themselves, therapeutic methods, biological materials and biological substances isolated from the genome of living organisms, etc. are subject to protection (products other than the above-mentioned grounds for non-patentability). (including pharmaceuticals), methods, and manufacturing methods) (Articles 10 and 18).

It should be noted that, unlike in Japan, computer programs themselves are not patented inventions. Computer-related inventions (inventions involving the use of computer programs) and recording media on which computer programs are recorded are subject to protection.

It is a practical item or a part thereof, and has the shape or structure of an article (Article 9).

An application for a certificate of addition may be filed to protect improvements or advances in inventions related to invention applications or patented inventions (Articles 76 and 77).

The certificate of addition is not subject to the registration requirements of inventive step, but it must be included in the same inventive concept as the invention.

Application format

Direct application, PCT application, and foreign language documentation system available (Rule 4.3.1.).

You can claim priority under the Paris Convention when filing an application (Article 16).

There is a divisional application system (Article 26). After the examination of a divisional application is completed (decision of refusal is made), a divisional application cannot be filed regardless of whether a request for appeal is filed. It is impossible to predict when the examination will be completed, so if you wish to file a divisional application, it is advisable to do so as soon as possible.

Required Documents

A patent application shall include the following documents:

Application, specification, claims, necessary drawings, abstract (Article 19)

In addition, in the case of a patent application related to a utility model, drawings are essential documents (Rule 4.3.)

Specifications, etc. must be in Portuguese. For this reason, whether you are applying directly to Brazil or entering the national phase of a PCT application, it is necessary to send English documents, etc. to the local agent as soon as possible.

Application publication

The application will be published 18 months after the application is filed (Article 30). There is also an early publication request system (Article 30).

It should be noted that, unlike in Japan, patent applications that have been withdrawn or abandoned are also compulsorily published (Article 29).

Correction possible period

・When receiving an amendment order

・Before filing a request for application examination

- Within 90 days after the written opinion of non-patentability is issued (the notice of reasons for refusal will only be published in the official gazette and will not be sent to the applicant or agent)

Request for examination

Similar to Japan, there is a review request system. In order for a patent application relating to an invention to be submitted for examination, a request for examination must be filed within 36 months from the filing date (Article 33). Even if a Brazilian application claims priority under the Paris Convention, the starting date of the claim period is the date on which the Brazilian patent application was actually filed. If no request for examination is made, the application will be deemed finally withdrawn.

If 36 months have passed since the filing of the application and within 60 days from the date of the invalidation, the invalidation can be lifted upon the applicant's request for review.

★Patent Prosecution Highway

①Technical field subject to PPH application

All technical fields

②Number of PPH applications received (number after relaxation from January 2023, 1)

The upper limit for the total number of conventional PPH applications (the total number of applications from PPH implementing agencies with Brazil, including Japan) is 700 per year (however, the upper limit is 250 per year for each IPC section).
Furthermore, the total number of applications for PCT-PPH is capped at 100 per year.
(In other words, 800 cases per year for regular PPH and PCT-PPH)

The upper limit for the total number of applications in the third phase (January 2022, 1 to December 1, 12) is 31 per year, and since the upper limit was already reached in September 800, 2022 will also be within the year. It is expected that the upper limit will be reached at some point.

③ Number of possible PPH applications per applicant

INPI will only accept one PPH application per applicant per week. On the other hand, there is no limit to the number of PPH applications that can be filed by one applicant at the JPO.

④Restrictions on first country applications (in the case of PPH applications based on examination results in Japan)

PPH application is possible if the first country application is Brazil or any country that implements PPH.

⑤ Others

If the application requirements for PPH are not met, the application will be rejected without being given a deadline to meet the requirements, and no appeal can be filed.

(Updated on August 2023, 8!)
The number of PPH applications for 2023 (including both PCT-PPH and conventional PPH) has reached the upper limit of XNUMX.
Therefore, no further PPH applications will be accepted.

reference:
https://www.jpo.go.jp/system/patent/shinsa/soki/pph/japan_brazil_highway.html(Japan Patent Office website)
https://www.jetro.go.jp/biznews/2023/01/8d7d1cdc29a533ef.html(Japan External Trade Organization (JETRO) website)

★Green patent

Priority examination is available for patent applications related to environmental technology. The examination period in Brazil is long, around six years, so this system, which allows final appraisal to be made within two years, is beneficial. The number of applications accepted under this system is limited to 500.

Requirements for receiving priority examination for green patents:

office action

Similar to Japan, novelty, inventive step, industrial applicability (Articles 8, 9, 11, 13, 14, 15) and grounds for unpatentability (Articles 10, 18) are imposed. It will be done.

“Absolute novelty” (Article 11(2))

Inventions that are described in the specification, etc. of an earlier application published after filing cannot be registered (absolute novelty). In other words, as in Article 29-2 of the Japanese Patent Law, there is no relief provision even if the inventors or applicants are the same, so care must be taken.

During the examination process, the applicant may be required to submit a translation of the claims contained in the relevant documents of the country of original application. The filing period is normally 7.1 days (Rule XNUMX.).

Note that the above translation can be replaced by a statement from the applicant that all the documents filed in Brazil are included in the documents filed in the country of original filing.

The exception to the loss of novelty is December (Article 12).

① December from the date of disclosure by the inventor

② 12 months from the date of disclosure by the Patent Office of the application filed without the inventor's consent based on information obtained from the inventor or the result of the inventor's actions

③ 12 months from the date of disclosure by a third party based on information obtained directly or indirectly from the inventor or based on the inventor's actions

Fees must be paid within 60 days from the date the patent application is approved (Article 38).

Even if 60 days have passed, it is possible to make a late payment by paying an additional fee.

Patent rights last for 20 years from the date of filing of the patent application or 10 years from the date of issue of the patent, whichever is longer.

Invalidation trial

 

Type of trademark

Similar to Japan, it is possible to file applications for word trademarks, figure trademarks, symbol trademarks, combination trademarks, and three-dimensional trademarks.

Application format

・Direct application
　　No single application multiple classification system
　　It is possible to claim priority under the Paris Convention.
　・Madpro application
　　Two-stage registration fee payment required
　　Subsequent designation based on international registration before the effective date of the Madrid Protocol (2019/10/2) is not possible

madrid protocol

As a member of the Madrid Protocol, Brazil can be designated in a Maduro application.

Application publication/examination request

There is no application publication system or examination request system.

office action

Similar to Japan, grounds for non-registration include emblems of foreign countries or international organizations; trademarks without distinctiveness; trademarks that violate public order and morals; trademarks related to geographical indications; and registered trademarks of others. Article 124).

Objection system, etc.

Objection system:
　Yes. A petition can be filed within 60 days from the publication date before trademark rights are granted.

Invalidation trial system:
　Yes.

　Administrative invalidation procedures (invalidation trial):
　　This can be done to INPI within 180 days from the date of grant of registration.

　Judicial invalidity proceedings (nullity proceedings):
　　Can be brought in federal court within five years from the date of grant of registration.

Non-use cancellation system: Yes. Requests can be made after 5 years from the date of registration.

 

Designs that can be registered

・A decorative arrangement of lines and colors that can be used for decorative shapes or products, whose external shape produces a new and original visual effect, and which can be used as a model for industrial production (Industrial Property Law) Article 95)

・Pure works of art are not considered designs (Article 98 of the same law)

- Shapes that violate public order and morals, are inevitable, or are essentially determined by technology or function cannot be registered (Article 100 of the same law)

Application type

・Secret design: Can be kept secret (publication deferred) for 180 days upon request at the time of filing (Article 106 of the same law)

- Partial design: Explanation of matters that do not exist and for which protection is not sought, dotted lines or dashed lines are not allowed.

・Related designs/sets: None, but up to 20 variations can be included in one application if they have the same purpose and the same remarkable distinctiveness (Article 104 of the Act)

Brazil can be designated in international applications

On August 2023, 8, the Geneva Amendment to the Hague Agreement will enter into force.

From the date of international registration, an international application has the same effect in each designated contracting party as a design application filed directly with the office of that contracting state (Article 14 of the Geneva Act)

Formality examination

There is no substantive examination of the application, and if there are no deficiencies in the formality examination, the application will be granted registration (Article 106 of the Industrial Property Law).

substantive examination

A design right holder can request substantive examination for novelty and originality at any time during the term of the design right (Article 111 of the Act).

Objection system, etc.

Objection system: None.

Invalidation trial system: Yes.

　　Administrative invalidation procedures (invalidation trial):
　　　This can be done to the Brazilian Industrial Property Institute (INPI) within 5 years from the date of registration (Article 113 of the same law)

　　Judicial invalidity proceedings (nullity proceedings):
　　　Actions can be taken in federal court during the period from the date of registration. (Articles 118 and 56 of the same)

 

It is a member country of the UPOV Convention (International Convention for the Protection of New Varieties of Plants), and it is possible to protect new varieties through the variety registration system. The UPOV Convention is a treaty concluded with the aim of protecting new plant varieties according to basic principles common to each country, and includes basic principles such as conditions for protection of new varieties, minimum protection period, and preferential treatment for nationals. is determined.

 

 

 

Patent attorney specialist　　Bearded Yoshiaki

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