Time to get it right
November 10, 2017

Otto Licks A trial court decision that was delivered in June by Judge Marcio Solter will force IMPI practice to improve (Komlog v Vice Commissioner for Patents at IMPI). A trial court decision that was delivered in June by Judge Marcio Solter, who sits in the 31st Federal Court in Rio de Janeiro, an IP trial court that hears cases against the Brazilian National Institute of Industrial Property (IMPI), will force IMPI practice to improve (Komlog v Vice Commissioner for Patents at IMPI). Created in 1970, IMPI was perceived as an agency with management problems. Nowadays, its patent backlog is huge (almost 10 years for first office action), and examination quality is low and plagued by red tape. Problems such as a lack of transparency at IMPI tend to be overlooked by inventors who have a host of other difficulties to contend with when dealing with the agency. IMPI makes patent applications available as filed only, by means of a link to the European Patent Office (EPO) website, which has published Brazilian applications since August 1, 2006. However, links to EPO Espacenet often return the following message: “Invalid or missing parameters in the request”. Nevertheless, this is better than having nothing published, which is IMPI standard policy regarding issued patents. The only way a member of the public can obtain an issued patent is by hiring a patent attorney, or an agent, who will order complete copies of the file wrapper of an issued patent and then will work to assemble the pages, as per the prosecution history of the application, until notice of allowance and issuance. This work can take hours. Several commentators have said that the lack of issued patent information that is readily available in Brazil prevents a patent owner from lawfully enforcing its patent rights against possible infringers, as it cannot serve them with a copy of the patent(s) beforehand. [blockquote]"SUBJECTING PEOPLE TO CRIMINAL LIABILITY FOR THE INFRINGEMENT OF SECRET PATENTS MAY GO AGAINST THE BASIC PRINCIPLES OF FAIRLESS, DUE PROCESS AND RULE OF LAW STATED IN THE BRAZILIAN CONSTITUTION."[/blockquote] These commentators have stated that Brazilian patent law assumes that patents will be accessible to the Brazilian public, but this assumption is not met by IMPI policy, and this is surprising considering that patent infringement is a statutory federal felony. Subjecting people to criminal liability for the infringement of ‘secret’ patents may go against the basic principles of fairness, due process and rule of law stated in the Brazilian Constitution. The situation worsens when a patent is subjected to a post-grant opposition and the IMPI board decides to amend the patent’s claim chart. Such decisions do not establish new language for the claims, leaving the issued decisions open to interpretation. The situation might finally improve with Judge Solter’s decision. The judge ordered IMPI to provide a copy of an issued patent to Komlog, a Brazilian company that received several cease and desist letters, from a patent owner in Europe, which threatened Komlog with a patent infringement complaint. Judge Solter decided that IMPI has a duty to provide a copy of an issued patent when requested by any member of the public. The judge also added that IMPI’s failure to act was a violation of the constitution and Brazilian patent law. The judge gave IMPI 20 days to provide Komlog with a copy of the issued patent. The copy has to reflect the amended claim chart as decided during the post-grant opposition. The copy has to include all of the patent’s text, bibliographical information, the amended specification, the amended claim chart the drawings and an abstract. Judge Solter’s decision also quoted a portion of IMPI’s brief. The agency informed the court that it would not issue a copy of a patent because it needed to remain consistent with a prior administrative decision not to make the documents public.

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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/article/time-to-get-it-right

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