Patents in Brazil: Part 4 – prosecution and opposition

Are all types of subject matter patentable, and if not, what types are excluded?
No. According to Article 10 of the Patent Law, the following are not patentable:

“I. discoveries, scientific theories and mathematical methods; II. purely abstract concepts; III. schemes, plans, principles or methods for commerce, accounting, financing, education, advertising, lottery and control; IV. literary, architectural, artistic and scientific works, or any aesthetic creation; V. computer programs per se; VI. presentation of information; VII. rules of a game; VIII. operating or surgical techniques and methods, as well as therapeutic or diagnostic methods for the treatment of humans or animals; and IX. the whole or part of natural living beings and biological material found in nature or also isolated therefrom, including the genome or germplasm of any natural living being and the natural biological processes.”

In addition, Article 18 also provides that the following are not patentable:

“I. that which is contrary to [accepted principles of] morality and good conduct and to public safety, order and health; II. substances, matter, mixtures, elements or products of any kind, as well as any modification of their physical-chemical properties and the respective processes of obtaining or modifying them, when they result from the transformation of the atomic nucleus; and III. the whole or part of living beings, except transgenic microorganisms which meet the three requirements for patentability – novelty, inventive step and industrial application – specified in Article 8 and which are not mere discoveries.”

Is there a duty to the Patent Office to disclose prejudicial prior disclosures or documents? If so, what are the consequences of failure to comply with the duty?
No, no duty applies.

May the grant of a patent by the Patent Office be opposed by a third party, and if so, when can this be done?
The grant or issue of the patent can be challenged by a third party within six months of the grant or issue date. The proceedings are known as administrative nullification proceedings or post-grant proceedings. Before the actual grant of the patent, third parties may file observations in the application. These observations can be submitted from the publication of the application up to the conclusion of the examination (known as 'pre-grant opposition').

Is there a right of appeal from a decision of the Patent Office, and if so, to whom?
A decision rendered by the patent examiner granting, rejecting or shelving the patent application may be appealed to the president of the Brazil Patent and Trademark Office (BPTO). The final decision rendered by the BPTO may be appealed to the federal courts in Rio de Janeiro (as the BPTO headquarters are located in Rio de Janeiro).

How are disputes over entitlement to priority and ownership of the invention resolved?
Disputes over priority or ownership may be resolved by the BPTO or the courts. In any case, the BPTO’s decisions are subject to judicial review. A priority claim must be proved by means of a suitable document of origin, containing the number, date, title, specification and, when applicable, claims and drawings, accompanied by a simple translation of the certificate of filing or equivalent document containing data identifying the application, the contents of which will be of the entire responsibility of the applicant. If two or more authors have independently devised the same invention or utility model, the right to obtain a patent will be assured to whoever proves the earliest filing, independently of the dates of invention or creation. The withdrawal of an earlier filing without producing any effects will give priority to the first later filing.

Is there a grace period in your jurisdiction, and if so, how long is it?
Yes, there is. The grace period is 12 months and the disclosure of an invention or utility model will not be considered state of the art if it occurs during the 12 months preceding the filing date or priority date of the patent application when made by:

• the inventor;
• the National Institute of Intellectual Property through the official publication of the patent application filed without the consent of the inventor based on the information obtained from him or her or resulting from the acts; or
• third parties on the basis of information obtained directly or indirectly from the inventor.

What is the term of a patent?
The term of an invention patent is 20 years, while the term of a utility model patent is 15 years, counted from the filing date of the application. The term must be no less than 10 years for an invention patent and seven years for a utility model patent counted from the date of grant, except where the Instituto Nacional da Propriedade Industrial is prevented from carrying out the substantive examination of the application, owing to a duly evidenced judicial dispute, or for reasons of force majeure.

"Patents in Brazil: Part 5 – current developments" will appear in the IAM Weekly next week.

An earlier version of this article first appeared in the seventh edition of The International Comparative Legal Guide to Patents published by Global Legal Group Ltd, London (www.iclg.co.uk).