Transforming Procedures: BPTO’s Strategic Shift and Legal Insights

The Directorate of Patents, Computer Programs and Integrated Circuit Topographies (DIRPA) informs that the distribution of patent applications for technical examination, and the consequent carrying out of the examination, will now be ordered by the date of the examination request, in a change to the order current, determined by the application filing date.

This strategic change aims to optimize the national processing of patent applications, aligning Brazil with international practices, taking into account the manifestations obtained with Public Subsidy Taking No. 1, of 2023. It is believed that this measure will determine a new dynamic to voluntary changes in the patent application, contributing to a reduction in the decision time for patent applications at BPTO.

Finally, it should be noted that the expected start date for this order is January 1st , 2024. This change will result in a more agile and reasonable patent system for all actors involved in the innovation process in the Country.

BPTO PUBLISHES LEGAL OPINIONS REGARDING THE ANALYSIS OF APPEALS PROVIDED IN ARTICLE 212, § 1 OF THE BRAZILIAN INDUSTRIAL PROPERTY LAW

In compliance with article 212, § 1, of the Industrial Property Law No. 9,279/1996, which deals with administrative appeals, the BRPTO’s General Board of Appeals and Administrative Nullity Processes forwarded a legal consultation on the scope of the appeal analysis effect to the Federal Attorney’s Office regarding the application and limits to be reached in the exam. According to the article, appeals, which can be filed within 60 days of the decisions, will be received with suspensive and full return effects, applying all provisions relevant to the first instance examination, as applicable.

The rules shall come into effect on February 10, 2024.

OPINION No. 00019/2023/CGPI/PFE-INPI/PGF/AGU

This opinion deals with procedural aspects in appeals relating to patent application procedures, in particular the time limit for changing the set of claims established in article 32 of Law No. 9,279/96.

Thus, the General Board of Appeals consults on the limits of knowledge of an appeal against the decision to reject a patent application, in which the appellant adds new elements, such as modifications to the claims, which were not presented in the first instance.

The response required the analysis of two issues, namely, i) the time limit for changing the claims of patent applications and ii) the limits of knowledge of the appeal.

Regarding the time limit, there is an understanding already established within the BRPTO that the date on which the technical examination of the patent application is requested is the final time limit so that changes can be voluntarily requested in the claim, as long as the amendments are intended to clarify or better define the application and are limited to the matter initially revealed.

There is also a consolidated understanding within the scope of the BRPTO according to which, after the date on which the technical examination of the patent application is requested, changes to the scope reduction claim are permitted because “it serves the public interest, since the part removed from what was initially claimed will become part of the public domain, free competition”.

These are, therefore, the time limits already consolidated within the scope of the BRPTO for changing the set of claim of patent applications.

Important legal opinion is, however, regarding the understanding of the limit of knowledge of appeal, which impacts tactics in complying with office actions.

The limits of knowledge of the appeal in the IP Law are largely determined by administrative preclusion, as this prevents the presentation of a new claim at the appeal stage. If a claim should have been presented at a certain procedural opportunity and was not, such claim cannot be presented again. Furthermore, such a claim, even if it was presented on appeal, cannot be accepted in the appeal court, due to the preclusion.

It is understood that innovation is not applicable within the scope of the IP Law appeal, especially to include a new claim, even if to reduce the scope of the claim of the patent application, due to administrative preclusion.

Therefore, the party no longer has the right to produce the act after the deadline, nor does the BPTO have the right to acknowledge the claim during an appeal. If the requirements were not met within the designated period, the opportunity for the applicant to comply with them was precluded. And, it should be noted, it is not possible to innovate on appeal, therefore, there is no opportunity on appeal to present a new claim.

In conclusion, both the time limitation for changing the set of claim of patent applications, and the limits of knowledge of the appeal in the IP Law, can be considered as relevant guides for understanding the query presented. That is, both limits will restrict both the applicant and the BRPTO’s conduct.

OPINION No. 00016/2023/CGPI/PFE-INPI/PGF/AGU

The General Board of Appeals and Administrative Nullity Processes submits to the legal department, through TECHNICAL NOTE/SEI No. 182/2023/INPI/CGREC/PR (0891724), a consultation on the limits and scope of the full devolutive effect of the appeal, stated in Article 212, § 1º, of Law No. 9.279/1996 – the Industrial Property Law.

This opinion addresses formal issues related to administrative appeals, in general, concerning industrial property rights examination procedures.

In summary, it has been clarified that if the user does not correct the error in the petition protocol at the first available procedural opportunity, their option to rectify the act will be precluded. Consequently, the first instance procedure of not removing the petition from the proceedings and considering the request inexistent, for this reason, is considered legal. Note that there is no administrative appeal against the first instance decision that deemed the application non-existent. Such appeal will not be recognized by the second administrative instance.

Regarding the absence of presenting the power of attorney at the appropriate procedural moment, within 60 (sixty) days of filing the application, this application will be closed, and any appeal filed in this sense will not be recognized by the second administrative instance.

Finally, when it is ascertained that the petition submitted and not processed contains a relevant new fact, the application filed shall be returned to the first instance, according to the area of competence related to the matter, the Trademarks and Patents Department or the Coordination of Technology Transfer Agreements, if the matter discussed in the petition directly interfere with the administrative decision.

However, if the petition can be immediately analyzed by the second administrative instance, the General Board of Appeals may proceed with the examination of the appeal, on the grounds of the “ripe cause theory”, already provided for in Brazilian civil procedural law, ensuring the reasonable duration of the administrative process.

OPINION No. 00017/2023/CGPI/PFE-INPI/PGF/AGU

This opinion addresses inquiries from the technical area regarding trademarks.

In summary, in a judgment of strict legality, the opinion states that when examining an appeal against the refusal of a trademark application on the grounds of infringement of item XIX of article 124 of Law No. 9.279/1996 (imitation/reproduction of a third party’s trademark), in which there is a forfeiture request of the cited prior registration, there is no legal obligation to suspend the said appeal until the forfeiture request has been analyzed.

The statement of forfeiture does not have retroactive effects, and the trademark registration is completely valid until this decision is published in the RPI.  Consequently, it constitutes an impediment to the registration of a subsequent application that reproduces or is similar to the previous one, under the terms of art. 124, item XIX of Law no. 9.279/1996 (imitation/reproduction of a third party’s trademark).

The BPTO can, for the sake of expediency or convenience, decide to maintain the abeyance of appeals in those cases in which the prior impediment to the application is in the process of being forfeited. There is no illegality in the administrative practice if the BPTO decides to maintain the abeyance; however, there is no legal provision in this case.

In addition, it was established that if the examination of a trademark application, at first instance, did not analyze the availability of the trademark sign, because it concluded that the sign did not have the requirements related to lawfulness, distinctiveness or truthfulness and the trademark sign was considered sufficiently distinctive at second instance, the proceedings must return to the first instance for the assessment of the availability of the trademark sign.

Nevertheless, based on an analysis of suitability and convenience and based on the “ripe cause theory”, expressly established in Brazilian civil procedural law, and on the constitutional principle of the reasonable duration of the administrative process and the means that guarantee the celerity of its processing, a definitive analysis of the merits of the trademark application by the second administrative instance is applicable.

OPINION No. 00018/2023/CGPI/PFE-INPI/PGF/AGU

Opinion that deals with matters relating to the industrial design registration procedure. Scope of articles 100, 101, 104 and 106 of Law No. 9,279/1996.

The process of analyzing the application for industrial design registration differs from the other procedures provided for in Law no. 9279/1996 to grant other industrial property rights because there is no substantive examination before granting registration.

Therefore, with the filing of the application for registration of the industrial design, the preliminary formal examination, in accordance with article 102 of the Law, and the technical examination are carried out, both at the first administrative level.

In fact, the Law provides for a faster procedure when it comes to industrial design requests, but it does not exempt the technical examination of the requirements listed in articles 100, 101 and 104, that is, the prohibitions and requirements set out.

Therefore, it can be concluded that the technical examination carried out, in the first administrative instance, in the case of industrial designs, is not exclusively formal. This is because, even if the first administrative instance does not examine substantive criteria related to the novelty and originality of the object, the provisions of articles 100, 101 and 104 must be verified before granting registration.

Having made these considerations, the General Board of Appeals questions what is the procedure to be taken, on appeal, after the decision of the first instance that rejected the application for registration of an industrial design based on the lack of ideal conditions for the drawing or photograph (art. 101, IV, Law No. 9,279/1996), however it is also verified that the application violates article 100 of the Law, that is, a matter that is not registrable as an industrial design and has not been previously assessed.

Just like the understanding alleged for Trademarks, in respect of the constitutional principle of double degree of jurisdiction, the case must return to the first administrative instance, which has internal regulatory competence to analyze the matter, guaranteeing the parties the review of the claim by a authority other than that which issued the contested decision-making act when appealing to the second instance.

And exceptionally, based on an analysis of suitability and convenience and based on the “ripe cause theory”, expressly established in Brazilian civil procedural law, and on the constitutional principle of the reasonable duration of the administrative process and the means that guarantee the celerity of its processing, it is considered appropriate for the final analysis of the registration request by the appeals court.

In conclusion, the BPTO’s proactive shift in patent procedures, coupled with the publication of crucial legal opinions, reflects Brazil’s commitment to fostering innovation and aligning with global intellectual property standards. The anticipated improvements, commencing in 2024, promise a streamlined and responsive patent application process, contributing to a more dynamic innovation ecosystem. Legal insights into appeal processes underscore the importance of adherence to established timelines and highlight the intricate balance between innovation and administrative preclusion. As Brazil embraces this progressive trajectory, it positions itself as a key player in shaping the future of intellectual property, ensuring efficiency, fairness, and resilience in patent examinations.

Should you require further information regarding any of these matter, please contact us at: info@herrero.es