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Proposed Emergency Patent Grant Measures in Brazil

The Brazilian Government may soon launch an emergency measure to eliminate the Patent Office's backlog by automatically granting 231,000 pending non-pharmaceutical applications. The proposed rules for implementing the new measure were available for public comments until August 31, 2017. However, the Patent Office has already mentioned, during recent meetings, that proposals made by local associations that add complexity to the process, like the possibility of amending the claims prior to grant or of requesting substantive examination after grant, would probably be disregarded.

While it is still difficult to know the exact details and timing for this measure, companies may soon need to deploy a strategy with a timeframe as short as 90 days to take full advantage of the new system. Applicants will need to minimize potential risks by both using the proposed opt-out system for selected applications and filing pre-grant oppositions against competitors. Below is our advice on how to deal with the emergency measure.

Patents finally granted

While the automatic grant measure is spurring controversy, the Patent Office has implied that there is really no other viable option to deal with the backlog problem in the short term. For certain types of applications, such as ones covering technology with a shorter life-cycle, we advise applicants to make the most use of this emergency measure.

What to do:

  • Anticipate filings. The emergency measure should cover all pending applications filed before the measure becomes effective. Considering it is hard to foresee when this measure will be published and implemented, consider filing national stage applications in Brazil before the 30-month deadline or claiming Paris Convention priorities prior to the 12-month deadline;

  • Pay attention to the claims initially filed. As mentioned above, it is likely that the Patent Office will simply disregard any amendments made after an application is filed, that is, patents will be granted based on the original claims filed in Brazil. It is therefore important to guarantee that the original claims provide the desired coverage;

  • Make sure all annuities are duly paid. As currently drafted, the measure does not include applications with outstanding annuity payments.

Opt-out-clause

The enforcement of patents granted without examination can be trickier, as the likelihood of obtaining injunctive relief should be lower. Moreover, objections as to the validity of this measure and to the patents granted under this measure might be raised in Courts. The measure as currently drafted includes an "opt-out" clause according to which applicants may request that a given application is not automatically granted, i.e., that the application undergoes regular substantive examination.

What to do:

  • We advise applicants to make use of this opt-out clause at least for a few particularly important applications. Since most pending applications will be automatically granted, the backlog should be substantially reduced, meaning applications that make use of the opt-out system would be examined faster. As currently drafted, applicants are provided 90 days to make use of the opt-out alternative, counting from the acceptance of an application into the automatic grant procedure.

Competitors

The measure also provides competitors with the possibility of removing third parties' applications from the automatic grant system by submitting pre-grant oppositions.

What to do:

  • Analyze your competitor's portfolios and submit pre-grant oppositions. According to our proprietary data-mining software, filing a pre-grant opposition reduces the chances of an application being granted by nearly a half. More importantly, by filing a pre-grant opposition, you remove an application from the automatic grant program.

As explained above, adopting the right strategy will allow companies the ability to take advantage of the automatic grant system while reducing potential risks. Applicants should also consider use of the opt-out provision and actively target competitors' applications when developing a portfolio strategy in Brazil.

Ricardo Nunes and Andre Venturini also contributed to this article.

© 2017 Sterne Kessler

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About this Author

Paul Calvo, Intellectual Property Attorney, Sterne Kessler Law Firm
Ph.D. Director

Dr. Calvo, a director in the Biotechnology/Chemical Group, represents a diverse group of U.S. and international companies innovating in the biotechnology and pharmaceuticals industries.  He provides counsel with regard to global patent portfolio strategy, licensing, patent validity, infringement, and design around strategies.  Dr. Calvo is experienced in U.S. and international patent procurement and enforcement matters (particularly patent prosecution and oppositions), FDA/ANDA practice, technology transfer, invalidity, noninfringement, freedom-to-operate and patentability opinions, and...

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