by Rodrigo Maior and Luiza Cotia In 2011, the US enacted a post-grant review system for patents1, raising awareness to the strategic relevance of such procedures in different jurisdictions. Brazil, as many other countries, has a similar procedure, which has been in force uninterruptedly since 19712 with little change. The number of post-grant reviews filed before the Brazilian Patent Office (BRPTO) is still scarce when compared to the amount of oppositions filed before the EPO and even in comparison to the post-issuance challenges filed before the USPTO. Nevertheless, a close examination of the BRPTO’s practice shows a consistency in the decisions of post-grant review proceedings, allowing both patent owners and challengers to build a fair expectation on the outcomes thereof, upon which strategic decisions can be based. The proceedings of post-grant reviews in Brazil Law #9,279/96, the Brazilian Patent Statute, currently regulates post-grant review proceedings. According to this statute, any third party with legitimate interest or the BRPTO itself may challenge a patent within 6 months from grant3. If the challenge succeeds, the patent is invalidated with retroactive effect to the date of filling. After the filing of the post-grant review request, the BRPTO publishes the corresponding notice, after which the patentee has 60 days to reply. The reviews are sent to the BRPTO’s General Coordination of Appeals and Post-Grant Reviews4 for the issuance of an intermediate opinion regarding the merits of the case. Following this intermediate opinion, the parties have another opportunity to file comments within 60 days counted from the notification thereof5. The Director of the BRPTO then analyzes the matter, issuing a final decision6, which ends the post-grant review procedure and can only be challenged through judicial review. It is worth noting that courts can review the merits of the final decision and the intermediate opinion, as well as compliance with due process. A workflow of patent prosecution in Brazil can be accessed here. Statistics of post-grant reviews in Brazil As seen above, although post-grant review procedures have been in force in Brazil for over 40 years, the challenges presented to patents before the BRPTO are still infrequent. Under the 1996 Patent Statute, the BRPTO has issued 39,044 patents, but only 556 post-grant review procedures have been initiated in the same period, with an average of 30 procedures filed per year.
Figure 1 shows the number of post-grant review requests filed per year.
Of those 556 post-grant review requests7 filed under the 1996 Patent Statute, only 213 (38%) had been decided by the BRPTO until February 2015. In most cases (79%), the BRPTO upholds the patent, either in full or in amended form.
On the other hand, as per the analysis of the file wrapper of the post-grant reviews made available to the public at the BRPTO website, 95% of the decisions issued by the BRPTO Director are consistent with the intermediate opinion. In other words, the BRPTO Director will almost certainly follow the conclusions of the intermediate opinion when deciding a post-grant review procedure.
Brazilian companies tend to file the great majority of post-grant review requests. In the pharmaceutical field, for instance, Brazilian generic pharmaceutical companies are usually the ones challenging patents. The five most frequent challengers in Brazil are Petrobras, Semeato, Marchesan, Sogefi and Indeplast.
Figure 2 shows the challengers' profile in Brazilian post-grant review proceedings.
As for the technology fields affected, most post-grant reviews are filed against patents covering agricultural technologies. There is also a relevant amount of filings against patents in the electrical and telecommunication, mechanical, chemical and pharmaceutical arts.
Figure 3 shows the technology fields most affected by post-grant reviews according to the International Patent Classification (IPC).
Important lessons to patent owners and challengers Patent owners and challengers must keep in mind that the fate of post grant review procedures will most likely be sealed by the BRPTO intermediate position. The party expecting an imminent unfavorable decision has little to gain by waiting for a final decision by the BRPTO Director. Hence, the parties should always consider acting promptly after such opinion is published, by preparing either an invalidity lawsuit or a declaratory validity lawsuit. Brazilian federal courts will hear such cases even when post-grant review proceedings are pending before the BRPTO, and the possibility of obtaining preliminary injunctive relief staying the post-grant review proceedings makes this strategy particularly useful, especially concerning sensitive technology. Our team has been using this strategy successfully since the mid-2000s, obtaining important victories and avoiding unfavorable final decisions in post-grant reviews to clients in industries such as mechanical, medical devices, pharmaceutical and chemical. This article was written in collaboration with Guilherme Coutinho. Please contact us for further information at prevail@localhost/licks/site.
1 Leahy-Smith America Invents Act, Pub. L. No. 112-29, Sec. 6, 125 Stat. 299-313 (Sep. 16, 2011) 2 The first version of a post-grant review procedure in Brazil was enacted in 1919 by Law 8.764 and, over the years, different pieces of legislation have successively excluded and reinserted this mechanism in the Brazilian patent law. The 1971 Patent Act (Law 5.772/71) was the last one to reintroduce this procedure in Brazil. 3 The proceedings of post-grant reviews before the BRPTO are shown under #8.1 to #8.9 at the Licks Patent Prosecution Workflow. 4 In Portuguese, Coordenação-Geral de Recursos e Processos Administrativo de Nulidade (CGREC). 5 Published at the BRPTO’s official gazette as decision # 205 (please see Licks Patent Prosecution Workflow # 8.4). 6 Published at the BRPTO’s official gazette as decision # 200 for the nullity of the patent, as decision # 201 for the maintenance of the patent or as decision # 204 for the maintenance of the patent in an amended form (please see Licks Patent Prosecution Workflow # 8.5 to #8.9). 7 Electronic search carried out at the BRPTO’s database, encompassing patents granted as of May 15, 1997. These post-grant review proceedings were examined under the Brazilian Patent Statute currently in force.