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BRAZILIAN PATENT SYSTEM SEMINAR Brazilian patent litigation and practical business
Marc Hargen Ehlers
January 31, 2012
© 2012 Dannemann Siemsen. All rights reserved.
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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
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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
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Introducing processes after examination
‐ Divisional Application
Possible to file divisional application(s)
Rejection Maintainedor
Allowed
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Introducing processes after examination
‐ 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).
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Introducing processes after examination
‐ 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.
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Introducing processes after examination
‐ 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
Rejection Maintainedor
Allowed
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Introducing processes after examination
‐ Appeal against Examiner’s decision
Rejection Maintainedor
Allowed
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Introducing processes after examination
‐ Appeal against Examiner’s decision
Rejection Maintainedor
Allowed
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Introducing processes after examination
‐ After allowance applicant must pay a final fee and the patent is granted
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Introducing processes after examination
‐ 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.
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Introducing processes after examination
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
Rejection Maintainedor
Patent Maintained
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Enforcement
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Criminal and/or civil remedies available
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Patent infringement action: A typical procedure
Possible technical report(s)
Remark: the nullity of the patent can be argued as defense (effects are “interparties”)
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The Court System in Brazil
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The Court System in BrazilState and Federal Law
Suits can be Appealed
before the Superior
Courts
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State Courts
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Federal Courts
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Case 1) IP utilization in Brazil
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Case 2) IP utilization in Brazil
an
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Case 2) IP utilization in Brazil
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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
year 2 2 1 3 1 0 Plaintiff Defendant
Total 9 National 9 7
Foreign 0 2
PatentTotal per
year 39 41 29 28 16 20 Plaintiff Defendant
Total 173 National 94 137
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).
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Obrigado! Thank you! ありがとうございます!
Marc Hargen Ehlers
January 31, 2012
© 2012 Dannemann Siemsen. All rights reserved.
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(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.
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(Ref)(Ref) Compulsory license
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%
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(Ref)(Ref) Compulsory license
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.
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(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.
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(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.
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(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
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(Ref.)Industrial
designs
Total term of 25 years
Industrial Designs for Must Mach Parts and the CADE (Economic Defence Administrative Counsel)