by Ricardo Nunes and Otto Licks Intellectual property owners filing patent, industrial design and trademark applications in Brazil struggle with the large backlog at the Brazilian Patent and Trademark Office. The INPI frequently takes more than ten years to examine patent applications, and sometimes five years or more to examine trademark applications or decide administrative appeals in trademark cases. Despite promises that were made, such as the hiring of hundreds of new examiners up to 2018, the backlog problem is only getting worse—although fortunately at a slower pace than in previous years. Now IP owners have decided they have had enough. Some have sued the INPI in federal district courts against the allegedly unreasonable delays. So far, the INPI has lost most of the cases and has had to deal with court decisions ordering the agency to decide pending cases within 60 days. Most of these lawsuits are decided by federal district courts in Rio de Janeiro, where the INPI is headquartered; four specialized courts there are in charge of handling cases filed against the federal agency. Appeals are decided by the first and second specialized panels of the Court of Appeals for the Second Federal Circuit. Setting a precedent In 2014, the second panel of the Federal Circuit issued a unanimous decision that upheld a lower court order that had given the INPI 60 days to decide an administrative appeal filed seven years earlier against the rejection of a trademark application. This important precedent meant that such unreasonable delays violate both the statute regulating federal administrative proceedings and the IP statute, and “fail to comply with the constitutional principle of the reasonable length of proceedings”, according to the court. [blockquote]"The second panel unanimously upheld a lower court decision that had established that a nine-month delay to decide an administrative appeal is “perfectly reasonable".[/blockquote] This decision is important because it seemed to reverse a 2012 split decision from the second panel that had overruled a lower court decision; that lower court ruling had also ordered the INPI to decide an administrative appeal within 60 days. In the earlier decision, despite issuing an official communication notifying the government about the importance of reducing the backlog at the INPI, the second panel had stated that the judiciary cannot establish a deadline for the decision of a particular pending case, especially when the INPI is able to show pending cases are being examined according to their chronological order. Even though there is no standard to establish that the delay from the INPI is unreasonable, it is worth mentioning that in 2011 the second panel unanimously upheld a lower court decision that had established that a nine-month delay to decide an administrative appeal is “perfectly reasonable”. In 2014, the first panel of the Federal Circuit also had the opportunity to decide this matter, unanimously upholding a lower court decision that had ordered the INPI to decide a trademark post-grant opposition procedure initiated almost five years earlier. Despite the INPI’s arguments that this decision violates the separation of powers and could disorganize the administration, the first panel agreed with the opinion from the district attorney’s office that the delay was unreasonable and violated the constitutional right to the reasonable length of proceedings and the basic constitutional principles that govern the administration, such as lawfulness, impersonality, morality, publicity, and efficiency. This recent decision reinforced a precedent set by the first panel, which had upheld a lower court decision that gave the INPI 60 days to decide an administrative appeal filed more than four years earlier against the rejection of a trademark application. The first panel was not convinced by the arguments raised by the INPI and unanimously established that the delay was unreasonable, violating the federal administrative proceedings rules and the IP statute, as well as the constitutional right to the reasonable length of proceedings and the constitutional principles that regulate the administration. These appellate court decisions show that suing the INPI might be the most effective way to fight the backlog problem in Brazil. When waiting in line is not an option, getting your day in court can save several years and precious IP rights.
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This article was originally published in “WIPR”, World Intellectual Property Review. For further information, please access the following website: http://www.worldipreview.com/contributed-article/jumping-the-queue