JUrISdIctIOn repOrt: brAzIL
eVALUAtInG InVentIVe Step
Otto Licks and rodrigo Souto maior
Momsen, Leonardos & Cia
Inventive step has only recently been introduced into the Brazilian Patent Law.
“LIKe tHe epc, tHe brAzILIAn prOVISIOn
Before the TRIPs Agreement (enacted by Decree 1355 on December 30, 1994),
dOeS nOt deFIne WHAt An InVentIVe Step
there was no statutory provision regarding the applicability of this requirement
to national patents. Even though the Brazilian Patent and Trademark Office
IS, bUt SUGGeStS tHe meAnS bY WHIcH
(BPTO) has mentioned inventive step in its Patent Examination Guidelines
One cAn determIne ItS preSence.’’
since 1976, the lack of specific statutory provisions has caused the Brazilian
courts to apply inventive step timidly and infrequently.
The Industrial Property Law (enacted on May 15, 1996) approaches inventive
step in Article 13, which is similar to Article 56 of the European Patents
other hand, only a few criteria were used and these did not combine to form a
Convention (EPC). Article 13 requires that for an invention to be patented,
single evaluation test, such as the EPO’s problem-and-solution approach.
the claimed solution should be “for a person skilled in the art, not derive[d]
Among the decisions issued by the federal trial courts, one rendered this
in an evident or obvious manner from the state of the art”. Like the EPC, the
year by the 35
th
Federal Court of Rio de Janeiro in Cephalon, Inc v. BPTO
Brazilian provision does not define what an inventive step is, but suggests the
means by which one can determine its presence. However, those means are
is especially illustrative. Ruling on the inventive step of a pharmaceutical
not yet well developed in Brazil.
invention, the trial judge applied standards such as the motivation to combine
and indicators such as the existence of a technical prejudice. The trial judge
The BPTO’s Patent Examination Guidelines are much simpler than those of
also assessed the scope and content of the prior art, and the hypothetical
the European Patent Office (EPO) and the US Patent and Trademark Office.
capacity of a person skilled in the art. However, he did not approach the issue
Regarding inventive step, the BPTO provides a few brief lines that describe
with the depth observed in decisions made in North American and European
the essential aspects of the evaluation, such as the motivation to combine,
cases.
and secondary considerations, such as the existence of a long-felt need,
commercial success and technical prejudice.
These examples show that the Brazilian courts are moving towards the use of
objective standards for the evaluation of inventive step, but that there is still
The Patent Examination Guidelines also give examples of situations that
a long way to go.
lack inventive step, such as juxtapositions with no new technical effect.
Nevertheless, these cannot be compared, for instance, with the thorough
As patents become more relevant in Brazil and as patent cases reach the
provisions of the European Guidelines, especially when combined with the judiciary with a greater frequency, the tendency will be for Brazilian courts to
48 pages that the Case Law of the Boards of Appeals of the EPO devotes to seek to apply the inventive step requirement in a more objective and rational
the inventive step evaluation. manner. Brazilian commentators are already calling for the adoption of more
objective assessment standards, such as those practiced in the US and Europe
This is in no way a criticism of the BPTO, but it reflects the incipience of
for several decades.
inventive step assessment in Brazil. This incipience is also noted in the way
the Brazilian courts have been applying Article 13 of the Patent Statute. Even
The North American and European systems can indeed shed light on the
though decisions regarding inventive step are increasingly common, the use
path through which Brazilian examiners, judges and attorneys will have to
of objective standards still needs to be improved.
walk to reach an effective method for the evaluation of inventive step. If we
succeed on doing so, Brazilian society will benefit from a more stable and
A good example of inventive step determination by the Brazilian courts is
developed patent system.
the decision in DMB Brasil v. BPTO issued by the 2
nd
Panel of the Federal
Court of Appeals for the 2
nd
Circuit. The panel asserted that inventive step
exists when the invention solves a technical problem in a way contrary to
the ordinary activities in the art, so that a person skilled in the art would not
Otto Licks is a partner at Momsen, Leonardos & Cia. He can be contacted at:
have adopted it. oblicks@leonardis.com.br
The decision uses standards such as the existence of technical prejudice, Rodrigo Souto Maior is an associate at Momsen, Leonardos & Cia. He can be
showing an effort towards the objective assessment of inventive step. On the contacted at: rasmaior@leonardos.com.br
56 World Intellectual property review September/October 2009 www.worldipreview.com
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