Posts Tagged: "Brazilian Patent and Trademark Office"

The Brazilian Patent and Trademark Office (BPTO) began accepting applications for position trademarks on October 1, 2021. Position marks are trademarks characterized by the particular spot in which they are placed on a product. While position marks were previously acknowledged by the BPTO and by the courts, they had yet to qualify for separate trademark registration; most brand owners registered them as figurative or three-dimensional marks. 

There is no doubt that it is a challenge to design a patent protection strategy for a new medical use (for example, a new disease to be treated or prevented by a known composition, active ingredient or biological). The proper format for claiming such subject matter may vary significantly between patent jurisdictions. In Brazil, besides the accepted format, there are other points that deserve attention in terms of increasing the chances of success in obtaining a patent, such as the need to present experimental data in medical use patent applications in order to meet the sufficiency of disclosure requirements.

Almost two years ago, the Brazilian Patent and Trademark Office (BPTO) launched a plan to reduce the backlog in examination of patent applications, which has had positive results. As part of this important initiative, at the beginning of 2021, the BPTO published its action plan for the year indicating its intentions to increase the efficiency of services offered by the institution via new performance goals. The plan to combat the backlog has already resulted in a reduction of more than 60% of patent applications pending for decision. This has had a positive effect on the credibility of the Brazilian patent system domestically, but also has contributed to the improvement of the national and international attractiveness of the sector, which will possibly provide a greater incentive to protect patents in Brazil.

A key issue of discussion with respect to the Brazilian patent system has to do with patents granted by the Brazilian Patent and Trademark Office (BPTO) under the following sole paragraph of Article 40 of the Brazilian IP Law: “Article 40 – The term of a patent for an invention shall be 20 (twenty) years and for a utility model 15 (fifteen) years as from the filing date. Sole Paragraph – The term shall not be less than 10 (ten) years for inventions and 7 (seven) years for utility models, as from the date of grant, except where INPI is prevented from carrying out the substantive examination of the application due to pending litigation or for reasons beyond its control.” This provision guarantees that patentees enjoy a 20-year term from filing and is particularly relevant due to the considerable examination backlog at the BPTO.

The Brazilian Patent and Trademark Office (BPTO) presently offers more than 15 programs to speed up examination of patent applications. The prioritization of certain patent applications by means of Patent Prosecution Highway (PPH) programs and other fast-track options has been very effective in reducing pendency. Brazil’s backlog has already been reduced by around 40% and the BPTO estimates an additional 40% reduction by August 2021.

Brazil’s accession to the Madrid Protocol has included several important changes to the country’s trademark system, such as simplifying the registration of trademarks, reducing costs, and implementing procedures that were not previously possible through the Brazilian Patent and Trademark Office (BPTO). Among these changes is the long-awaited possibility of co-ownership of trademarks.

Since 2014, when a decision of the Brazilian Patent and Trademark Office came into force that held trademarks could obtain “high renown” status through a specially-created procedure, there has been a marked increase in such requests in Brazil. However, this increase has also demonstrated that several marks which common sense would say that are well known and recognized by the public have been rejected due to technicalities. This article will tackle the main issues that may arise during the finding of a famous or high renown trademark in Brazil, and how to avoid them.

Like most countries, Brazil has been facing severe restrictions in an attempt to slow down the spread of COVID-19.  Non-essential services are currently closed in almost all metropolitan areas and authorities are discussing plans to resume activities while the number of fatalities reaches its peak. In Brazil, the courts have approximately 450,000 employees, including more than 18,000 judges. If we also consider 1.2 million attorneys, it is reasonable to say that the justice system in Brazil involves at least 1.65 million people. The Brazilian Patent and Trademark Office (BPTO) operates on a smaller scale, with no more than 1,000 public officials on duty. The IP community is on average quite smaller in comparison to other areas, such as banking and M&A, but still extremely active. The BPTO hears over 250,000 proceedings per year, including patent, trademark, design applications and contracts.

The authorization of consumption of Cannabis derivative products in several countries has led to the rapid development of a robust industry around such products. However, Brazilian legislation is still conservative concerning the sale, production, and use of cannabis derivative products, all of which are currently prevented by Brazilian law and defined as both civil and criminal offenses. But despite Brazil’s restrictive position concerning the permission of production and selling of cannabis-related products, the country is now taking baby steps towards the legalization of some aspects of the use and sale of cannabis products, putting the country at the center of discussions around this topic.