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dannemann.com.br © 2012 Dannemann Siemsen. All rigths reserved. 1

BRAZILIAN PATENT SYSTEM SEMINAR Brazilian patent litigation and practical business

Marc Hargen Ehlers

[email protected]

January 31, 2012

© 2012 Dannemann Siemsen. All rights reserved.


Topics

Introducing processes after examinationDivisional application

Appeal against rejection of patent application

Administrative nullity action

Enforcement

The Court System in BrazilState Courts

Federal Courts

Brief Analysis of Two Concrete Cases

Litigation Statistics


Introducing processes after examination

‐ Outline

Office Actions might be issued and must be

responded within 60 days

Office Actions might be issued and must be

responded within 60 days

NO EXTENSIONS

NO EXTENSIONS

Rejection Maintainedor

Allowed



‐ Divisional Application

Possible to file divisional application(s)


Allowed



‐ Divisional ApplicationFiling possible divisional

application(s)Divisional applications may be filed in Brazil until the end of examination. The “end of

examination”

is deemed to be the date of the conclusive technical opinion regarding

patentability

or

the

thirtieth

day

prior

to

the

publication

of

the

corresponding

decision,

whichever

occurs

last.

Since

it

cannot

be

foreseen

when

technical

examination will be actually concluded, the suggestion is to file any possible divisional

together

with

(or

soon

after)

the

reply

of

a

written

opinion.

If

the

application

is

directly allowed it will not be possible to file corresponding divisional application(s).

Furthermore,

we

must

draw

your

attention

to

the

fact

that

the

filing

of

divisional

applications

after

the

end

of

examination

(appeal

stage)

are

usually

objected

by

the

Brazilian PTO(INPI).



‐ Divisional ApplicationFiling possible divisional

application(s)According

to

the

interpretation

of

the

INPI

regarding

the

filing

of

divisional

applications,

it

would

be

necessary

to

be

excluded

from

the

scope

of

protection

of

the original application claimed subject matter and file it in the divisional application.

We do not share such position since we

understand

that

the

claimed

subject

matter

of the divisional application need only to be contained in the original application and

not necessarily be claimed.



‐ Appeal against Examiner’s decision

Amendments:

According

to

INPI

regulations

it

is

only

possible

to

restrict

the scope of protection

and new category of claims cannot be added

REPLY TO OFFICE ACTIONSFILING AN

APPEAL


Allowed





Allowed



‐ After allowance applicant must pay a final fee and the patent is granted



‐ Administrative Nullity Action

60 days ‐

NO

EXTENSIONS

60 days ‐

NO

EXTENSIONS

Remark:

The

INPI

can

declare

a

partial

nullity of the patent. It

is

necessary

to

combine claims.



Ends the administrative (INPI’s instance) proceedings of the case and, therefore, the only route available now further to contest this final rejection/maintenance decision is before the Brazilian Federal Court by filing a civil action against such decision.Although the deadline for going to the Court is five years counted from the publication of the decision, we recommend to take the initial steps right after such decision.

Rejection Mantained or

AllowedAPPEAL

Brazilian Federal Court

5 years


Patent Maintained


Enforcement


Criminal and/or civil remedies available


Patent infringement action: A typical procedure

Possible technical report(s)

Remark: the nullity of the patent can be argued as defense (effects are “interparties”)


The Court System in Brazil


The Court System in BrazilState and Federal Law

Suits can be Appealed

before the Superior

Courts


State Courts


Federal Courts


Case 1) IP utilization in Brazil



an


Litigation Statistics in Brazil*

2006 2007 2008 2009 2010 2011

TrademarkTotal per

year 44 50 45 44 52 26 Plaintiff Defendant

Total 261 National 201 165

Foreign 60 96

Industrial

design

Total per



Foreign 0 2

PatentTotal per



Foreign 79 36

*Remark: This data involves only our firm’s litigation (please note that our firm handles probably more than 40% of the patent litigations in

Brazil).


(Ref)(Ref) Compulsory license

‐ Compulsory licenseEconomical abuse by the patenteeNo exploitation of the patented subject matter in BrazilCommercialization does not meet the necessities of the marketIn cases of national emergency or public interest

On Nov/96 a law estalished that the Brazilian Public Healthcare System should provide antiretroviral medicaments.



On Aug/01 the former Health Minister (JoséSerra) anounced the compulsory license of the patent of Nelfinavir (Roche);

On the very same day Roche anounced that would reduce the corresponding price on 40%



On Jun/05, the former President, Luiz Inácio Lula da Silva (Lula) and the Minister Humberto Costa, signed a decret stating that the medicine Kaletra® (Abbott) was of public interest.

Thereafter despite of negotiations the patent of Kaletra® had its compulsory license declared by the Brazilian Goverment.


(Ref)(Ref) Technology licensing Patent and Know‐How Agreements

Since Industrial Property Law no. 9.279/96 does not deal effectively with unpatented technology, know‐how is not considered by INPI as a proprietary right.

INPI understands unpatented technology as not proper matter for licensing. It considers that transfer of know‐how is a sale and an acquisition whereby, after termination of the agreement, the recipient can continue to use the technology.

Clauses stipulating return of know‐how or prohibiting further use of the technology after expiration of the agreement are not accepted.

INPI accepts confidentiality obligations related to know‐how to survival for a maximum period of 5 years after termination or expiration of the agreement.


(Ref)(Ref) Technology licensing Patent and Know‐How Agreements

INPI only records technology transfer agreements for 5 years, exceptionally extendable for a further five years provided, the technology was not completely transferred or the agreement is essential for the competitiveness of recipient. The maximum term for tax deductibility purposes is also 10 years.

Royalties must be within the price commonly practiced in the relevant technical field, considering both national and international markets.

Royalties may be based on a percentage of net sales or a fixed amount based on each unit produced.

Royalties involving related companies are limited by the corresponding ceiling of fiscal deductibility specified by Regulation no. 436/58 and vary between 1% to 5% of the net sales price depending on the field of technology involved.

INPI considers that imported products and components should not be included in the net sales price for the calculation of royalties.


(Ref)Examination on medicines (ANVISA)(Ref)(Ref)Examination on medicines (ANVISA)

REPLY

WRITTEN OPINION

REJECTIONALLOWANCE

APPEAL

FINAL REJECTION

90 days

ANVISA WRITTEN OPINION

GRANTED PATENT

REPLY

FINAL REJECTION

60 days

60 days


(Ref.)Industrial

designs

Total term of 25 years

Industrial Designs for Must Mach Parts and the CADE (Economic Defence Administrative Counsel)

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