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BRAZILIAN REFORM


“THE INPI REFORM INCLUDES A PROGRESSIVE INCREASE IN THE NUMBER OF PATENT EXAMINERS, TO COPE WITH THE BACKLOG AND THE EXPECTED INCREASE OF PATENT FILINGS.”


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@daniel.adv.br


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


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