BRAZIL – INTELLECTUAL PROPERTY
1. International Treaties
Brazil is signatory to major international IP treaties, including (i) the Paris Convention for the Protection of Industrial Property, (ii) the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement), (iii) the Patent Cooperation Treaty (PCT), (iv) the Berne Convention for the Protection of Literary and Artistic Works, (v) the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, (vi) the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, (vii) the Strasbourg Agreement Concerning the International Patent Classification, (viii) the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, (ix) the UPOV Convention, and (x) the WIPO Convention.
As for trade mark law treaties, Brazil is not yet signatory to the Madrid Protocol. In recent years, there have been positive moves towards accession to the Protocol. The draft Accession Agreement is currently before the Office of the Presidential Chief of Staff (Casa Civil), pending submission to the National Congress.
2. National Laws
In Brazil, the provisions of trade mark, patent, design and unfair competition law are collectively set out in the Brazilian Industrial Property Law (Law No. 9,279 of May 14, 1996, “BIPL”). Of note regarding copyright and software law are the Brazilian Copyright Law (Law No. 9,610 of February 19, 1998, “BCL”) and the Brazilian Software Law (Law No. 9,609 of February 19, 1998, “BSL”), respectively.
In general, Brazilian IP laws apply to nationals of, or persons domiciled in, a country that grants Brazilians or persons domiciled in Brazil equal or equivalent rights under the laws of that country.
The BIPL regulates rights and obligations regarding patents (for inventions and utility models), industrial designs, trade marks, geographical indications, technology transfer agreements and the repression of unfair competition. The BCL, in turn, regulates the rights over literary and artistic works, as well as neighbouring rights. The BSL sets out provisions for the protection of intellectual property rights pertaining to computer programs and their sale in this country.
Responsibility for the registration of trade marks, patents, industrial designs and software, as well as the registration of licensing agreements, lies with the Brazilian Patent and Trade Mark Office, known in Portuguese as the Instituto Nacional da Propriedade Industrial (INPI). The INPI is a government agency under the auspices of the Ministry of Development Industry and Foreign Trade (MDIC). Its main function is the management of the Brazilian system for the concession of intellectual property rights. Works protected under the Copyright Law, depending on their nature, shall be registered with other different public bodies, such as the National Library or the Music School of the Federal University of Rio de Janeiro.
A trade mark registration remains in effect for ten years commencing with the date of its grant, and may be renewed for equal and successive periods. An industrial design registration remains in force for a period of ten years from the date of filing, being extendable for three successive periods of five years each. As for patent registration, an invention patent remains in force for a period of 20 years, and a utility model patent for a period of 15 years from the date of filing (and a minimum of ten years (patents) and seven years (utility models) from the date of grant).
Copyright registration is optional for the purposes of protection. If the work is original in accordance with the terms of the BCL, it will be afforded copyright protection regardless of registration. According to the BCL, the economic rights of the author are protected for 70 years from the first day of January of the year following his/her death. The “moral” rights involved are inalienable and irrevocable, i.e. they cannot be cannot be transferred, licensed or waived.
3. Enforcement of IP Rights
The BIPL provides that infringement of trade mark, design, patent and geographical indication rights and acts of unfair competition constitute both a civil wrong (tort) and a crime. Likewise, copyright and software infringement are both civil wrongs (tort) and crimes. Hence, the injured party is entitled to rely on both civil and criminal measures in order to enforce its rights.
As for the civil proceedings, the injured party may file a lawsuit seeking the cessation of the infringing act, coupled with a claim for damages. The lawsuit may also include a request for an ex parte preliminary injunction with a view to immediate cessation of the harmful conduct, pending a decision on the merits. The plaintiff may also seek the imposition of a daily penalty for failure to abide by the preliminary injunction.
In addition to infringement actions, the BIPL makes provision for the setting aside of trade marks, designs and patent registrations which have been unduly appropriated by third parties. In such a nullity action, the interested party may include in its initial application a request for an immediate stay of the effects of the registration in question, pending a final decision on the substantive issue of whether or not there has been undue appropriation.
Infringement actions must be filed before the state courts, whereas the nullity actions referred to above are heard by federal courts. This is because INPI is automatically a party to all nullity actions, and whenever a government agency is a party to a lawsuit, the action must be filed before the federal courts.
Criminal remedies prescribed by the BIPL, the BSL and the Criminal Code include imprisonment or the imposition of a fine on the infringer. In terms of criminal proceedings, one very important provision is the possibility of filing a preliminary criminal search and seizure action, aimed at gathering evidence of acts of infringement and avoiding the destruction or hiding of evidence by the infringer.
Border control mechanisms also feature as part of the Brazilian system of enforcement of IP rights. Federal Decree No. 6759 of February 5, 2009 includes authorisation for the customs authority to seize any products it considers to bear altered or imitated marks.
Of note in this context is the increase in recent years in the number of surveillance and enforcement operations conducted by customs and federal police agents. Customs authorities have also been implementing anti-counterfeit training sessions and workshops for customs agents. These measures have led to a significant increase in the effectiveness of the operations conducted.
Simplified procedure for the granting of patent applications
The Brazilian PTO, together with the Brazilian Ministry of Industry, Foreign Trade and Services (MIFTS), opened a public consultation on July 31, 2017, regarding a new proposal for a simplified procedure for the granting of patent applications. The objective of this new proposed procedure, according to the BPTO, is to guarantee transparency to the process, as well as align the measures to fight the backlog in the examination of patents with the demands from society. The proposal prescribes that patents whose new applications or requests to enter the national phase were filed up until the date of the publication of the new proposal will be granted within 90 days, as long as they fulfil certain requirements and had not received reasoned subsidies from third parties. Patent applications involving pharmaceutical products and processes are excluded from this simplified procedure. The interested parties had until August 21, 2017, to send their suggestions and, after such date, the proposals will be analysed by the BPTO and the MIFTS.
New Guidelines for the Examination of Patent Applications relating to chemical inventions
On 2 January 2018, the BPTO published the Resolution No. 208/2017, adopting the New Guidelines for the Examination of Patent Applications relating to chemical inventions. The new guidelines represent a consolidation of BPTO’s practice on the chemical and pharma fields, notably in connection with how a compound shall be claimed; determination of specific rules on how applications comprising second medical use claims in vivo tests must be disclosed in the specification for compliance with enablement requirement; and definition on how polymorph applications must be drafted in order to be sufficiently described.