Examination requests: a chaotic scene
November 10, 2017

Scientific theories and mathematical rules must be correct throughout if they are to be accepted as true because a single mistake will result in the collapse of the entire rule or theory. Similarly, the rules on patent applications must be flawless. Since 2008, based on report no. 0152/2008 issued by the attorney general of the Brazilian patent office (INPI), Article 32 of the Brazilian patent law has been interpreted as a limitation on the amendments applicants can introduce. The general agreement among local patent associations is that this results in several flaws when patent applications are made in Brazil. Instead of amending the previous application, as a scientist would do, the INPI, in a way that’s very common in Brazil, decided to find a magical solution. The result was guideline no. 93/2013, published last year, which actually introduces more uncertainties to an already uncertain scenario. The mantra adopted by the INPI since 2008 is that, after examination of a patent application is requested, only amendments that result in a restriction of the scope of protection, or those that aim to correct clear mistakes, will be accepted. Any attempt to modify the scope of protection or make it broader will be rejected. At the time, the first reaction of applicants was to file divisional applications to circumvent this limitation. This was a logical reaction as the only restriction on divisionals, according to Brazilian law, is that they must be limited to the matter originally disclosed. However, the INPI immediately found a way of interpreting originally disclosed matter as originally claimed matter. As a consequence, those divisionals have fallen apart. Another immediate reaction was to take advantage of a provision in Brazilian law that any interested party may request examination of a patent application. What if one of your competitors, seeing that the set of claims in one of your applications includes unpatentable matter, decides to request examination of the case? This leaves you with no way to file amendments and it seems that you will simply lose your case. So far, there has been no solution to either problem. Guideline 93/2013 introduced some novelties to this chaotic scene. First, should the scope of protection be broadened in a single claim, the whole set of claims will be rejected, and the previous claims will be considered in examination. This does not seem to be a very effective way to proceed, particularly in view of the huge backlog currently faced by the INPI. Any attempt to make examination faster would be warmly welcomed. [blockquote]"SHOULD THE SCOPE OF PROTECTION BE BROADENED IN A SINGLE CLAIM, THE WHOLE SET OF CLAIMS WILL BE REJECTED, AND THE PREVIOUS CLAIMS WILL BE CONSIDERED IN EXAMINATION".[/blockquote] Second, and this is somewhat surprising, is that changes in claim categories may be accepted. Even worse, exclusion of matter from independent claims can be allowed if the matter is included in any of the patentability restrictions of Brazilian law. You might be wondering what happened to the INPI’s mantra. After all, modifying claim categories will certainly change the scope of protection and, sometimes, make it larger. Removing elements from independent claims will always make the scope of protection larger. Against this background, a new article is sorely needed to explain under which circumstances a modification of a claim category can be accepted. Additionally, it seems the INPI is disregarding the preambles of claims as if they were simply decoration. The rule, in general, is that a product defined by a process can be redrafted as a process defined by a process. Similarly, a process defined by a product can be redrafted as a product defined by a product. The other way round would not be possible: that is, having the product defined by a product and the process defined by a process. This analysis may sound simple, but the examples provided at the end of guideline 93/2013 can be a real challenge. There are particular situations in which even the inclusion of new claims may sound acceptable. The above is a brief description of the troubled times currently lived in by Brazilian practitioners. Unlike a mathematical formula that always works in a given way, it is impossible to forecast that the prosecution of a Brazilian patent application will reach a reasonable result. Concerning guideline 93/2013 in particular, there is no standard formula either. The best results will therefore be reached on a case-by-case basis. The Brazilian IP community has great expectations for 2014, despite distracting events: a carnival in March, the FIFA World Cup in June and elections in October. The Brazilian IP landscape is likely to be affected by activity at the executive, legislative and judicial branches. The year started with changes in the administration, with the announcement of Otavio Brandelli as the new commissioner for the Brazilian Patent Office (INPI). He replaces Jorge Avila, who held the position for about 10 years, but was recently labelled by the government as “pro-patent”. A career diplomat, and an advocate for the “agenda for development” that Brazil and Argentina presented at the World Intellectual Property Organization (WIPO), Brandelli is known for his strong views about the patent system, especially towards pharmaceutical patents. In his first speech, Brandelli supported a bill (5.402/2013) introduced by House Representative Newton Lima suggesting severe changes to the current patent statute. Lima’s proposal, influenced by recent changes in India, aims at lowering the standards of patent protection and enforcement and raising the bar for patentability. According to the statement, Brandelli plans to organise an event at the INPI with Lima to discuss the bill. An announcement on the INPI website also mentions Brandelli’s support for the competitiveness of local industries. The most controversial statement in Brandelli’s announcement was support for the current workflow between the INPI and Brazil’s food and drug administration (ANVISA) regarding pharmaceutical patents. Between 2008 and 2012 the INPI has undertaken all institutional procedures under the Brazilian legal system to have its relationship with ANVISA established by the highest bodies of the Brazilian administration. However, after a resolution in favour of the INPI, politicians at the cabinet level mocked the system by means of an agreement in which the INPI was forced to drop the decision in its favour. The agreement subverts the patent system in Brazil, giving ANVISA more opportunity to deny patent protection based on political motivations. The severe problems at the INPI were not mentioned, such as the 13 years backlog in patent examination; the lack of motivation of examiners to keep production levels compatible with other offices around the world; or the quality of paper file scanning, which hinders office efficiency. Issues with the INPI’s internal computer programs were also ignored. The agency turned down an offer made by the European Patent Office to use its computer programs free of charge but, to this date, it has not produced an alternative. Legal reform 2014 promises to be a busy year for the legislative branch too. The possibility of reform of Brazilian copyright law will keep the committees overseeing IP working hard. The second bill affecting the IP regime is the patent reform bill (5.402/2013). Some of the changes that the bill intends to implement are: Limiting the patent term to 20 years; Banning patentability of second medical use inventions; Increasing the standard for inventive step; and Strengthening ANVISA’s prior approval powers to deny pharmaceutical patents. If patent reform is approved by congress, the Brazilian patent system will be very much aligned with the Indian Patent Act of 2005. Activity in the IP landscape will be seen at courts too. The lawsuit filed against pipeline patents, seeking to declare them unconstitutional, might be decided by the Supreme Court. This is not the only case before the Supreme Court. At the end of 2013, ABIFINA (an association of Brazilian generic companies) filed a lawsuit asking the court to declare unconstitutional the sole paragraph of Article 40 of the Brazilian patent law. The paragraph in question guarantees a minimum of 10 years of patent term from the date of grant. This is one of the most important provisions to protect inventions against the INPI’s backlog. The office of the president, the national congress and the attorney general’s office have submitted briefs asking the court to dismiss the lawsuit. They stated that the sole paragraph of Article 40 is not meant to protect only foreign industries, but also Brazilian companies such as Petrobras and Embraer, that invest in innovation and file patent applications every year. The federal courts have 38 lawsuits filed by the INPI seeking to invalidate over 200 mailbox patents. Despite having the statutory authority to seek the invalidation of a patent, the INPI has never exercised that right. Further, in addition to pharmaceutical inventions, the cases filed seeking to nullify IP over automotive spare parts might have important definitions. If you have any questions or need additional information, please contact us at info@localhost/licks/site This article was originally published in “WIPR”, World Intellectual Property Review. For further information, please access the following website: http://localhost/licks/site/prevail/articles/what-to-expect-in-2014/

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