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26/5/2013
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IP PROTECTION IN LATIN AMERICA
BRAZIL
Joaquim Eugenio Goulart
May 23rd, 2013
South America's leading economy
and regional leader;
Vast natural resources and
consumer market;
Brazil | Highlights
Well-developed agricultural, mining,
manufacturing, and service sectors;
Political and economical stability.
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Brazil | Geography
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Area
Population
200 million
8.6 million km²
World 5th largest country
Main Cities
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São Paulo
Rio de Janeiro
Brasilia (Capital)
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Imports (US$ Billion) | 2012 1) China 34
2) USA 32
3) Argentina 16
4) Germany 14
5) South Korea 9
6) Nigeria 8
Exports (US$ Billion) | 2012 1) China 41
2) USA 26
3) Argentina 17
4) Netherlands 15
5) Japan 7
6) Germany 7
Sources: Brazilian Govt/ MDIC / IMF
World 7th largest economy in market exchange rate (2012)
Brazil | Economy: Trade Exchange
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Position Product Value ∆ % 2012/11 % Share
1 Ores (mining) 33,244 - 24,8 13,7
2 Oil and Fuel 30,986 - 0,1 12,8
3 Soy Beans and its products 26,122 8,2 10,8
4 Transport material 24,594 - 2,1 10,1
5 Metallurgic Products 15,556 - 10,51 6,3
6 Chemicals 15,189 - 6,4 7,5
7 Meats 15,266 -42,8 7,3
8 Sugar & Ethanol 15,031 - 8,5 6,2
9 Machines & Equipments 10,573 1,1 4,4
10 Paper & Pulp 6,656 - 7,4 2,7
Brazil | Economy: Exportation
Sources: Brazilian Govt/ SECEX/MDIC
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Brazil | Economy: Media
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Brazil | Business Opportunities
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PATENTS
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The Brazilian Patent Office is receiving approximately 30.000 new patent
applications per year.
Average time of examination of a patent being presently 6 to 10 years
depending on the technical area.
The Brazilian Patent Office was nominated in 2009 as an International
Search Authority (ISA) under the PCT.
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Brazilian Patent Office
Number of examiners – From approximately 100 in 2006 to 273 in 2010. Plans are
to hire additional 165 examiners until the end of 2012 and more 165 in 2013.
Training - close cooperation with the EPO, German Patent Office, UK Patent
Office, Japan Patent Office and USPTO.
Presently 70 examiners are undergoing training.
Brazilian Patent Office
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Brazilian Patent Office – Summary of the Situation
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Main current problem: patent backlog
Faster prosecution expected in view of new examiners
Fast track
• Potential infringement cases (warning letter to the alleged infringer)
Article 40 of IP Law – 20 years from filing OR 10 years as of grant, whichever
expires later
Patentability Requirements
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Enablement (Sufficiency of Disclosure): Articles 24 and 25 of Brazilian Patent Law
Novelty
Inventive Activity
Industrial Applicability
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Filing a Patent Application
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General rule: Translation into Portuguese…
IN CASE OF URGENCY:
Any language; Latin alphabet;
Information about the applicant;
Information about the inventor;
Fulfilled within 30 days.
ATTENTION FOR PCT: Portuguese version of the claims.
Initial Examination
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Priority Filing Publication Request for examination
Technical examination
12 months
18 months
36 months
Third parties may present information
for aiding examination
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Amendments during/after examination
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DURING THE TECHNICAL EXAMINATION
To restrict the scope of the claims to the examples described in the application
Excluded matter => Divisional application
IP Law Article 32 – “before” the request for examination
voluntary amendments filed after the request for examination are acceptable if the alteration consists of:
a restriction of the scope of protection; or
a correction of minor typing and/or translation mistakes.
AFTER GRANTING
Amendments after the granting – only to correct typos
Divisional: it has the same expiry
date and filing date of the original
application
Certificate of Addition: it has the
same expiry date of the original
application/patent; however the
filing date is different from the
original application/patent
After issuance, interested parties may
request administrative nullity of the
patent within 6 months of issue
Patentee is notified to reply the nullity
request
Intermediary report is issued; both
parties may submit additional
comments
A decision is issued maintaining or
cancelling the patent
Issuance
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Amendment in the IP Law:
Law Nº 10196 of Feb 14, 2001
Art. 229-C
“grant of patents to pharmaceuticals products and processes
are subject to prior approval by ANVISA”
Pharmaceutical Patent Applications
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Computer program per se are not patentable in Brazil (article 10, V of the IP Law);
Software is protected by specific law (Law n. 9609/98 – similar to copyright protection;
However, prohibition of patentability is not applicable to method and products that include computer program steps.
Software Inventions
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• Term: 10 years of protection, plus three extensions of 5 years possible, totaling 25 years;
• Requirements: absolute novelty, originality, possibility of industrial manufacture.
• Automatic registration after formalities examination. Examination on merits is possible under request by the applicant.
Nullity proceedings may be instituted ex officio (when contrary to the legal
requirements) or at the request of any person having a legitimate interest within 5
years from grant of the registration
Industrial Designs
TRADEMARKS
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Statistics from BTO
15% 18%
Art. 125 (IP Law): registered
marks considered highly
renown receive protection in all
classes.
Resolution 121/05 (BTO):
highly renown marks are those
which have undisputable
authority, fame and reputation.
Duration: 05 years
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Protection of Famous Marks | (Highly Renown)
Evidence:
1) Years of use;
2) Potential consumers;
3) Market share;
4) Spontaneous recognition;
5) Induced recognition;
6) Channels of trade;
7) Geographic extension of use;
8) Channels of promotion/advertising;
9) Years of promotion/advertising;
10) Promotion/advertising investment;
11) Volume of sales;
12) economic evaluation of the mark.
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Protection of Famous Marks | (Highly Renown)
Total of marks currently recognized as highly renown: 26
HOLLYWOOD
HELLMANN’S
TRAMONTINA
PLAYBOY
HAVAIANAS
LAND ROVER
3M
CHANEL
CORAL
NATURA
ITAU
BANCO DO BRASIL
O BOTICARIO
MOCA
KIBON
DERBY
CHICLETS
BIC
DIAMANTE NEGRO
Protection of Famous Marks | (Well-known)
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Converse Inc.
vs.
All Star Artigos
Esportivos
(2003)
Art. 126 (IP Law): protects non-registered
marks considered well-know on its field of
activity.
Corresponding application must be filed (60
days)
Case law: use and local famous in Brazil are not requirements.
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Trade Dress Protection
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Art. 195 (IP Law): combats unfair competition.
+ Art. 130 (IP Law): combats dilution
Calypso Bay x
Vipi Modas
TJGO, 2003
Red Bull x
Latco Beverages
TJRJ, 2012
Secondary Meaning
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Definition: when a descriptive sign acquires distinctiveness through use (trademark function).
IP Law: does not have specific provision (only case law).
Rio de Janeiro Federal Court of Appeals: descriptive words may become marks through the use.
São Paulo Alpargatas S/A
X
Cervera Alpargatas
Sao Paulo State Court of Appeals, 1987
Valls & Cia Ltda (GASTHAUS)
X
Brazilian Trademark Office
Rio de Janeiro Federal Court of Appeals,
1996
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ENFORCEMENT
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Dual structure (Civil Cases)
IP rights infringement – State courts
IP validity – Federal courts
Brazilian Court System
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Federal Courts
Lawsuits against Government
agencies
Trademark or Patent Nullity Actions
(BPTO)
State Courts
Lawsuits against private
parties
Trademark or Patent
Infringement actions
B R A Z I L I A N S U P R E M E C O U R T
( C O N S T I T U T I O N A L C O U R T )
Superior
Court of Justice
State Courts of Appeal Federal Circuit Courts of
Appeals
State Courts Judges Federal Judges
Superior Courtsof Justice
Appeals against
violations or
misinterpretation of
Federal Laws
Process patents - reversal of burden of proof
Statutory infringement by equivalency and contributory infringement
Imported product manufactured by patented process is an infringement
Patent applications – collecting damages for acts between publication and grant or prior to publication if infringer duly notified.
Patent Infringement Litigation in Brazil
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Patent Infringement Action
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No discovery
Possible prior criminal search and seizure
Seizure of samples
Expert report by judge-appointed experts
Prison terms (3 months to 1 year)
Civil remedies
Search and seizure
Preliminary and permanent injunctions
Damages
Plaintiff’s lost profits
Infringer’s profits
Reasonable royalty
Typical defense
Revocation action Independent lawsuit before a federal court
As a matter of defense in the infringement action
Non-infringement
Patent exemptions IPL 43
performed privately
performed for experimental purposes
preparation of a medicine for individual cases according to a medical prescription by a compounding
pharmacists
products placed in the local market by the patentee or with his consent;
Patent infringement action
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“Therefore, said a patent can be challenged by third parties either by means of a matter of a
matter of defense or by means of an independent cancellation action.”
“As said, the Industrial Property Law allows, in its article 56, that the validity of a patent can be
challenged, at any time, as a matter of defense, which implies the right of a state court judge to
decide the validity of a patent”
“In spite of the fact that article 56 allows the possibility of challenging a patent as a matter of
defense, in my opinion, this article should be interpreted as an authorization to discuss the
validity before the Federal Courts, through a cancellation action.”
(REsp 1132449 / PR - Relatora Ministra NANCY ANDRIGHI - 3ª Turma – STJ - DJe 23/03/2012)
Cancellation as a matter of defense
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Same rules:
Dual system:
infringement action filed at State Court
cancellation action filed at the Federal Court (statute of limitation – 5 years from the granting date)
No discovery
Possible prior criminal search and seizure
Search and seizure
Preliminary and permanent injunctions
Damages
Trademark Infringement action
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“Licit is the importation made through an agreement executed
with the owner of the trademark registration abroad. Since
the lower court established that there was no authorization by
the owner of the trademark to import the products, this case
falls in the prohibition of article 132, III of the Law 9,279/96.”
(REsp 1207952/AM Relator Ministro LUIS FELIPE SALOMÃO – 4ª Turma/STJ - DJe
01/02/2012)
Parallel Importation
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Tips for enforcement: border control
Customs are
authorized to seize
counterfeits
Only trademarks and
copyrights
National database
(COANA and CNCP)
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How to be effective?
File a petition before the
Customs Administration
Organize training programs
Conduct investigations
Tips for enforcement: border control
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Philip Morris (Marlboro lighters)
Brazilian IP Law: modern tools to protect IP rights.
Brazilian enforcement system: different strategies that
provide tailored solutions to any case.
Brazilian Authorities: focused on meeting international
expectations.
Final Message
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Thank you!
Joaquim Eugenio Goulart
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