Patent Prosecution Strategy in Brazil - Daniela Fasoli - Senior Patent Attorney Clarke, Modet & Cº...

IP LEADERS IN SPANISH AND PORTUGUESE SPEAKING COUNTRIES

PATENT PROSECUTION STRATEGY IN BRAZILDaniela Fasoli ([email protected])

© 2013 Clarke, Modet & CºYOUR GATEWAY TO LATIN AMERICA

Brazil

Key Protection Issues

Backlog and best practice to accelerate granting of patents

Recent developments in Pharma cases - ANVISA

AGENDA


BRAZIL


Population

193,946,886

Surface

8,515,767 km2

Inflation

5.84% (2012)

Gross Domestic Product (PIB)

US$ 4.4 trillions (2012)

PIB per capita

US$ 12,144 (2011)

Unemployment rate

5.4% (September 2012)

Brazil


PATENT PROSECUTION


Novelty

Inventive Step / Activity

Industrial Application

Sufficient Description (?)

Invention 20 years from the filing date OR 10 years fromthe date of grant, which is the longer*

Utility

Model15 years from the filing date OR 7 years from thedate of grant, which is the longer

Term of Protection &

Patentability Requirements


Non-Statutory Subject-Matter

The following subject-matter is not considered to beprotected by a patent:

Discoveries, scientific theories and mathematical models

Abstract Conceptions

Business Methods

Literature, Architectural, Artistic and Scientific Works

Computer Programs

Game Rules

Therapeutic or diagnostic methods (humans or animals)

Essentially biological processes. Natural living beings, inwhole or in part, and biological material, when found innature or isolated therefrom


Challenges in the Patent

Prosecution

Amendments

Due to a “strict” position adopted bythe Brazilian Patent Office, anyamendment that extend or change thescope of protection of the invention,performed in the set of claims afterrequesting examination, is beingobjected by the BRPTO.

Divisional applications?

Best/Safest Practices


Challenges in the Patent

Prosecution

Backlog -New team of examiners (2013)

- 5 different lines for examination:

1. Utility models

2. First filing in Brazil (non PCT)

3. PCT with Brazil as International Authority

4. other PCTs

5. e-PEC applications (Argentina, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname, Uruguay

First choice in the lines: priority examination


Potential infringement ;

Applicant is 60 years old or older;

The grant of the patent is a condition for obtaining financial resources from official national fostering or credit institutions.

National emergency or public interest

green patents -pilot

preliminary opinion on patentability-pilot

cases "of interest of" the National Health System

HIV, cancer and neglected tropical diseases

How to accelerate the granting

of patents


ANVISA


ANVISA Law 10.196/01

Union's Attorney General (AGU) opinion

- public health issues

Report from the IP Inter-ministerial Working Group - New flow

New resolution RDC 21/2013

ANVISA - events

Civil Action aiming at the nullity of AGU’s Opinion is dismissed by the first instance's judge

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