What led you to a career in IP law?
It has been a personal journey that started in the late 1950s, when I became a lawyer, and turned into a family affair when I joined the law firm as a partner.
What would you say has been your career highlight to date?
Among all the activities that I have performed during my career, I consider a highlight to have been my participation in the Brazilian Official Delegation at the Stockholm Conference on Intellectual Property in 1967, which aimed to review the International Convention Related to Copyrights and Industrial Property. Another highlight was serving as general reporter (1979-1985) and president (1986-1991) of the Brazilian Intellectual Property Association, besides being a member since its foundation in 1964. I was also executive vice president (1992- 1995), executive president (1995-1998) and an honourable member of the International Association for the Protection of Intellectual Property, and am now an honorary member of the International Federation of Intellectual Property Attorneys.
How would you characterise the Brazilian IP litigation landscape at present?
The Brazilian IP litigation scene is well suited for disputes, as the Brazilian courts are increasingly specialising and concerned with deciding IP issues in accordance with the best international understanding.
What recent developments or decisions have had the biggest impact on your practice?
The recent adoption of the Madrid Protocol by the Brazilian Patent and Trademark Office (BPTO) has had a big effect on administrative practice since it came into force. With regard to patents, the BPTO, by means of various resolutions (eg, Resolutions 240 and 241), has implemented a new plan to reduce its backlog, which is having a significant positive effect and, consequently, resulting in a huge number of decisions being issued. As part of the same objective, the BPTO is also implementing various fast-track projects, which similarly aim at providing faster and more effective prosecution.
How have client demands changed over the course of your career and how have you adapted to this?
Changing client demands are a result of social and economic changes that have taken place. The development of new technologies and new business models, which has been increasing rapidly, has caused clients to seek specialised professionals that are able to support and understand both their needs and changes in the market by offering innovative and disruptive solutions.
What does effective law firm leadership look like to you?
Effective leadership of a law firm must be based on trust between the client and the professionals, who are dedicated to seeking the highest legal solutions for the case, upholding compliance as a permanent value and always investing in qualified professionals.
How can Brazilian patent owners best protect their assets overseas?
Overseas protection must receive special attention when it comes to developing patent protection strategies. In this regard, it is essential to understand the purposes, the market, the players and the intentions of each technology individually. By understanding the client’s objectives, practitioners can draw an effective protection strategy. Different routes (eg, the Patent Cooperation Treaty and the Paris Convention for the Protection of Industrial Property) may be necessary, depending on the case, while relying on specialised partners abroad is fundamental to obtaining local advice and trustworthy, specialised work.
What are the biggest mistakes that patent owners make when it comes to enforcement in Brazil?
There are various mistakes that patent owners can make when it comes to enforcement in Brazil; however, one of the biggest is failing to seek a specialised professional with a focus on IP matters to assist them.
In what areas are you seeing the most patent litigation at present – and do you see this changing in the near future?
The areas with the highest rates of patent litigation at present are the automotive and pharmaceutical sectors, with a huge potential for levels to continue to rise in the latter. I believe that we will also start to observe increasing numbers in the fields of biotechnology, life sciences and computer-implemented inventions.
If you could make one change to the Brazilian patent system, what would it be and why?
Although the BPTO has implemented important projects aimed at reducing the prosecution period, it needs to be restructured so as to guarantee that a new backlog will not form in the future and in such a way that the office has sufficient professionals, systems and other structures in place to maintain both the quality of decisions and a reasonable time frame to prosecution when compared with other patent and trademark offices.
Luiz Leonardos gives his name to Luiz Leonardos & Advogados and provides strategic advice on IP complex issues, including litigation, to national and foreign clients in multiple industry sectors He participated in 1967 of the Official Brazilian Delegation to the Stockholm Conference. He was the General Reporter (1979-1985) and President (1986 1991) of the ABPI, the Executive Vice-President (1992-1995), Executive President (1995 1998) a Member of Honor of the AIPPI and an Honorary Member of the FICPI.