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

Pedro Villardi pedro at abiaids.org.br
Wed Dec 6 00:25:00 PST 2017

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

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
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

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:

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