This page contains a Flash digital edition of a book.


T e reform of the INPI further includes harmonising practice with that of leading legislations. To this end, the INPI intends to provide distinct proceedings for invention patents and utility model applications. T e adopted measure envisages quicker prosecution proceedings for utility model applications, given the fact that utility models involve a lesser degree of inventive step.

Changes are also expected with respect to priority examination. Currently the sole ground for requesting expedited examination is infringement. T e INPI may broaden the grounds for obtaining expedited examination. At this stage, it has not disclosed what other grounds are being considered.

T e adoption of a Patent Prosecution Highway (PPH) programme is a burning issue, but it is not currently available. T e INPI wishes to consider adopting the practice and it would appear the Japanese model is under consideration by INPI.

One other important INPI initiative is to establish IP cooperation with other South American IP offi ces and thereby form a Latin American IP block. It has been speculated that the INPI could be entrusted with the role of the Central Patent Offi ce.

it is expected that the process will become more expeditious. T e INPI is currently implementing an electronic fi ling and prosecution system.

T e INPI reform includes a progressive increase in the number of patent examiners, to cope with the backlog and the expected increase of patent fi lings. Currently, there are 280 patent examiners; the plan is to have at least 850 examiners by 2015. As the INPI is a federal entity, candidates must sit for a compulsory examination to qualify as an examiner. Once candidates are selected they will be trained by senior colleagues. Brazilian examiners are required to have Master’s degree to qualify.

To cope with its increasing workload, the INPI will move to new premises in March 2012. T e new building will accommodate the INPI’s entire staff and will off er state-of-the-art facilities to enhance productivity. In addition, there is a plan to review and vote on pending draſt bills of interest that aim to improve IP law and practice.

T e INPI’s current lengthy delay in granting patents has created a growing dissatisfaction on the part of patent fi lers and this handicap has given rise to a lack of credibility from an investor’s perspective. It would appear that the proposed reform is timely, given Brazil’s importance to the market. If companies are to invest in Brazil, it

stands to reason that the IP system should be an effi cient one.

Finally, some signifi cant changes are expected in pharmaceuticals at the INPI. T e two-tier examination conducted by the examiners and ultimately by ANVISA (the national Food and Drug Agency) examiners since 2001 has been subjected to new rules. In practice, ANVISA’s mandatory review continues, but with limitations. T is is a result of the Federal Attorney General’s fi nal opinion aſt er being consulted on ANVISA’s competence to examine pharma patent applications.

The Attorney General’s findings delimit the responsibilities of INPI and ANVISA. It is our understanding that ANVISA examiners should not interfere with patentability issues and with the INPI examiner’s decision. Pharma issues such as the patentability of follow-on pharmaceuticals, for example the expansion of patent protection for new polymorphs, second and subsequent use drugs, selection patents and Markush-type claims have been endorsed by INPI examiners. However, the multi-department

Intellectual Property

Working Group (GIPI) created by presidential decree in 2001 to tailor public policies on IP rights, has expressed views to the contrary. Moreover, essential provisions in the law on patent linkage and on data exclusivity periods for human pharmaceuticals are still lacking. It remains to be seen whether the reform will address this issue. ■

Rana Gosain is a senior partner at Daniel Advogados. He can be contacted at:

Rana Gosain is a registered Brazilian IP agent and a Brazilian attorney. He has worked in the IP fi eld for more than 25 years and specialises in patent and design practice. He holds a postgraduate degree in IP (PUC/RJ and Brazilian PTO, 1984). In the past he has served as chairman of the Patent Commission in the Brazilian IP Association and on the board of directors in the Brazilian Association of IP Agents.

World Intellectual Property Review January/February 2012 63

Page 1  |  Page 2  |  Page 3  |  Page 4  |  Page 5  |  Page 6  |  Page 7  |  Page 8  |  Page 9  |  Page 10  |  Page 11  |  Page 12  |  Page 13  |  Page 14  |  Page 15  |  Page 16  |  Page 17  |  Page 18  |  Page 19  |  Page 20  |  Page 21  |  Page 22  |  Page 23  |  Page 24  |  Page 25  |  Page 26  |  Page 27  |  Page 28  |  Page 29  |  Page 30  |  Page 31  |  Page 32  |  Page 33  |  Page 34  |  Page 35  |  Page 36  |  Page 37  |  Page 38  |  Page 39  |  Page 40  |  Page 41  |  Page 42  |  Page 43  |  Page 44  |  Page 45  |  Page 46  |  Page 47  |  Page 48  |  Page 49  |  Page 50  |  Page 51  |  Page 52  |  Page 53  |  Page 54  |  Page 55  |  Page 56  |  Page 57  |  Page 58  |  Page 59  |  Page 60  |  Page 61  |  Page 62  |  Page 63  |  Page 64  |  Page 65  |  Page 66  |  Page 67  |  Page 68  |  Page 69  |  Page 70  |  Page 71  |  Page 72  |  Page 73  |  Page 74  |  Page 75  |  Page 76  |  Page 77  |  Page 78  |  Page 79  |  Page 80  |  Page 81  |  Page 82  |  Page 83  |  Page 84  |  Page 85  |  Page 86  |  Page 87  |  Page 88  |  Page 89  |  Page 90  |  Page 91  |  Page 92  |  Page 93  |  Page 94  |  Page 95  |  Page 96  |  Page 97  |  Page 98  |  Page 99  |  Page 100