[Ip-health] Threat of automatic granting of patent applications in Brazil

leena menghaney leenamenghaney at gmail.com
Wed Dec 6 07:42:00 PST 2017


Dear Pedro,

This is a terrible crisis in Brazil. To dismantle the patent examination
system is a major setback to the global movement for patent law reform. I
hope colleagues and comrades across the movement will respond in
solidarity.

Is there anything we can do from Indian civil society? Please give
direction.

Leena

On 6 December 2017 at 13:55, Pedro Villardi <pedro at abiaids.org.br> wrote:

> Hi all,
>
> From Brazil we wanted to share this very grave news. The Brazilian Ministry
> of Industry, Foreign Trade and Services and the National Institute of
> Industrial Property – INPI (Brazilian PTO), recently submitted a proposal
> for a simplified procedure for granting patent applications. This is not in
> place yet, but likely will be early next year.
>
> The main articles of such norm can be found below. These articles  rule the
> submission of applications to the simplified procedure.
>
> *Art. 1* This [NORM] is about the simplified procedure of granting  patent
> applications.
>
> Single paragraph. The simplified procedure shall not apply to the
> certificate of addition, divisional applications and applications for
> pharmaceutical products and processes.
>
> *Art. 2* The admission of the patent application in the simplified
> procedure shall be notified in the Intellectual Property Magazine – RPI
> (Acronym in Portuguese) when the following conditions are met:
>
> I - Protocol for the filing of the patent application or application for
> entry into national phase carried out up until the date of publication of
> this [NORM];
>
> II - Applications published or with a request to early publication until
> thirty days of the date of publication of this [NORM];
>
> III - Request to examine the patent application until 30 days of the date
> of publication of this [NORM];
>
> IV - Payment on time of the annual compensations;
>
> V - No publication of a technical examination opinion, pursuant to art. 35
> of Law No. 9,279 of 1996.
>
> *Art. 3*. From the publication of admission of the patent application in
> the simplified procedure, a ninety-day period for the publication of its
> approval shall begin.
>
> *Art. 4* The patent application  subject to patent opposition procedures by
> third parties within the period stipulated
> <https://www.linguee.com.br/ingles-portugues/traducao/
> within+the+period+stipulated.html>
> by the Art. 3 of this norm or on a date prior to the publication of
> admission shall be excluded from the simplified procedure.
>
> Single paragraph. The patent application shall be excluded from the
> simplified procedure by request of the applicant itself within the term of
> art. 3º.
>
>
>
>
>
> This proposal has been defended by its proponents as an "extraordinary
> measure" that promises to eliminate the backlog of the Brazilian patent
> office, corresponding to 231 thousand applications pending analysis. In
> practice, the measure consists in granting the pending applications
> without analyzing its consistency with the patentability requirements.
>
> In Brazil, only 14% of the pending patent applications correspond to
> residents in the country, while non-residents represent 86%[1] <#_ftn1>.
> This means that any measure of adjustment of the patent system is under
> great pressure from those who are the largest users, foreign companies. In
> this way, this norm contemplates mainly the interests of transnational
> companies, without guarantee that it will lead to social and industrial
> development for the country. The measure benefits specially poor quality
> patent applications.
>
> Regarding legal issues, the new norm violates the Brazilian Constitutional
> System and the Patent Law, because it disregards the requirements,
> conditions and legal procedures indispensable to the analysis of patent
> applications, as defined by Law 9.279 / 96, which regulates the patent
> system in Brazil. If the conditions for granting the patent are not fully
> satisfied, it cannot be granted without being unlawful. In addition, it
> should be noted that Law 9.279 / 96 cannot be disregarded by a normative
> instrument that is not a Law in the formal sense - approved by the
> Legislative Branch (however, following this criticism, there are rumors of
> a movement to create a legislative act or a presidential decree to overcome
> this obstacle).
>
> In addition, there is already a great flow of lawsuits challenging the
> Brazilian patent office decisions. In this already complex context, the
> proposal is that patents granted under the simplified procedure, which may
> affect third parties, may be subject to administrative and judicial review.
> Therefore, it is expected not only possible conflicts, but a flood of
> judicial challenges, transferring to the judiciary and interested parties
> the Herculean task of filtering out which patents and which legal actions
> are meritorious.
>
> Not only will sham litigation practices gain new ground, but also excessive
> patenting practices may gain new impetus, such as the strategy known as
> *evergreening*, which consists of the indefinite extension of monopolies
> through a succession of applications on small changes in already existing
> products. With the new measure, the intellectual property regime is even
> more exposed to this type of practice, legitimizing the request of
> secondary patents as a way to extend the monopoly of products beyond the
> twenty years established by Law.
>
> It should also be noted that although the proposed legislation "excludes"
> the pharmaceutical area, there are many other areas related to the
> productive chain of the pharmaceutical sector that are included. It is also
> public and well-known that the pharmaceutical area does not enjoy
> immunities when as regards to “exceptional measures”. It is enough to
> remember another measure that enabled granting of patents without analysis
> of merit: the revalidation patents, the so-called "pipeline". The pipeline
> patents in Brazil included the pharmaceutical sector in its scope, which
> implied significant losses to the Brazilian Health System, making it
> difficult for millions of people to access medicines.
>
> It is undeniable that the Brazilian patent office presents structural
> difficulties to fulfill its institutional and social purpose. Thousands of
> patent applications are filed per year in Brazil and the number of
> examiners is not sufficient to meet the demand. It is also true that the
> backlog problem is an important obstacle to the patent system in Brazil.
> However, it is not reasonable to further weaken this system through blindly
>  accelerating the granting of patents, without taking into account the
> constitutional criteria of promoting the social interest, technological and
> economic development of the country.
>
> In addition, considering the current number of examiners and the number of
> applications that are filed annually, it is possible that even if the
> measure is able to end the Backlog as promised by its proponents, it will
> not be effective in solving the  backlog problem in the long term. On the
> contrary, it is a palliative measure that does not face the root of the
> problem.
>
> This measure will weaken the capacity and autonomy of the examination
> carried out in Brazil and will encourage an abusive use of the patent
> system, proliferating applications that do not contain any relevant and
> substantive innovation for society, which serve only to block competition
> and scientific and technological progress. A reasonable solution for the
> fragility of Brazil’s patent examination system must seek the possibility
> of  a sufficient and qualified public-administrative functional framework
> and specially with the necessary conditions to verify compliance with the
> legal norms established in the country. To opt for a solution in default of
> the legal rigor needed to grant patents, allowing the automatic granting of
> such applications can not be the solution at all. As many stakeholders
> already mentioned, at the same time South Africa is moving towards a
> substantive examination system, Brazil is going in the opposite direction,
> dismantling its capacity to promote a quality and rigorous exam.
>
>
>
>
>
> ------------------------------
>
> [1] <#_ftnref1> INPI, Resumo estatístico da situação dos pedidos de
> patentes, disponível em:
> http://www.inpi.gov.br/menu-servicos/patente/consultas-publicas
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-- 
Leena Menghaney
Mobile: 9811365412


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