LSIPR 50 2018: Big changes in Brazil

Under the guidance of Luiz Otávio Pimentel, Brazil’s IP landscape has gone through significant changes in recent years.

Since his appointment as president of the Brazilian Patent and Trademark Office (INPI) in 2015, Pimentel has already made an impact.

Bringing with him interests in IP development, biotechnology innovation policy, and research and development projects, Pimentel is ideally placed to steer Brazil into clear IP waters.

From entering into a joint ordinance with the Brazilian Health Regulatory Agency (ANVISA) in April last year, to increasing the INPI workforce by a quarter, the country’s patent office is working hard to address IP-related issues.

“Brazilian companies are increasingly aware of the importance of IP,” says Pimentel. “Trademark applications are continuously growing and reached 186,103 in 2017.”

In 2016, there were 166,368 trademark applications in Brazil.

He adds: “On the other hand, patent applications are stable, standing at 28,667 last year.”

While the future is looking positive for Brazil’s IP landscape, it hasn’t come without its struggles.

Previously, a lack of definition of the attributions and procedures adopted by ANVISA and INPI when examining pharmaceutical patent applications led to a backlog.

INPI believed that ANVISA’s analysis should have been limited to a “health risk” analysis, but ANVISA was analysing patentability requirements in addition to that.

This resulted in a double-tier examination procedure in which both bodies analysed the patentability requirements of the same patent application. The two authorities were in a dispute as to who was in the position to examine patents.

To overcome this obstacle, the two organisations entered into a joint ordinance, clarifying each institution’s role in granting patents for pharmaceutical products and processes.

The new venture will help to accelerate the patent examination process, as well as facilitate the arrival of new generics on the market and ensure legal certainty for investors, according to Pimentel.

“Under the ordinance, ANVISA will analyse requests for prior consent focusing on the impact on public health, while INPI will analyse patentability,” Pimentel explains.

INPI and ANVISA are also in the process of initiating a working group with the purpose of encouraging the exchange of technical information, and working together to fully understand the patent examination process.

This is just one of Pimentel’s achievements during his time at INPI. The organisation is also receiving support from the Ministry of Industry, Foreign Trade and Services to solve the issue of delays in patent and trademark examinations. So far, this has delivered excellent results, according to Pimentel.

“In the case of trademarks, it takes 24 months for the final decision on an application without any oppositions,” he boasts. This is compared to the 64 months it took in 2016.

“In addition, the trademark backlog fell 14.9% in 2017, compared with 2016. And now INPI is working to reach 18 months by the end of this year and to join the Madrid Protocol.”

On patents, the office’s response time was, on average, ten years. Last year, the backlog fell by 7.6%, compared with 2016.

A series of measures were put in place to achieve this progress.

To begin with, INPI has hired 210 trademark and patent examiners over the past two years, increasing the institution’s staff by 25%. It also implemented a teleworking project, achieving a 40% increase in productivity.

“We expanded cooperation with other national and regional IP offices to implement priority examination programmes, giving faster responses to applications,” says Pimentel.

INPI has formalised patent protection highway agreements with the US, Japan, China, the European Patent Office and PROSUR (a coalition of IP offices from Latin American countries).

In January this year, INPI entered into a partnership with the Brazilian Industrial Development Agency to receive up to R$40 million ($12 million) of investment to improve its technological infrastructure. “It’s a key step in combating delays in examinations,” comments Pimentel.

“It is important to highlight that we had a great result in industrial design registrations. The stock of applications in this area dropped by 26% in 2017. Industrial designs have great value for micro and small companies that invest in designs to differentiate their products.”

Brazil may have had some hurdles to contend with in the past but with forward-thinking schemes in place and the leadership of Pimentel, INPI is well positioned to forge a solid foundation for the country’s future IP landscape.