February 12, 2015
The 25th Federal Court of Rio de Janeiro has recently decided a class action filed by the Brazilian Association of Industrial Property Agents (ABAPI), ruling against the PTO. The matter in controversy is article 13 of a PTO’s Resolution from 2013, which determines that patent or patent applications shall be shelved or terminated whenever more than one annual fee is not paid. It also prohibits the restoration in such cases.Such provision faced strong opposition by patent owners, attorneys and industrial property agents because, although the patent statute determines the shelving or termination in case of default, the statute allows the restoration. The patent owner or applicant can request such restoration within three months from publication of the notice of shelving or termination.Judge Brandão held that challenged provision was illegal, since it was clearly contrary to the patent statute, which8 / 9 guarantees that the PTO must notify the patentee and give him the chance to restore the patent or application. The Court declared void all the shelving and terminations determined by the PTO with grounds on article 13 and stayed the effects of such provision.If you have any questions or need additional information, please contact us at email@example.com.