Newsletter

Since July 15, 2013, the Brazilian Patent and Trademark Office (INPI) started offering a voluntary mediation service for administrative disputes arisen from trademark proceedings. Such alternative may help decreasing the number of current disputes as well the time for their solution and backlog. Moreover, it may facilitate internation parties seeking to settle related disputes in multiple jurisdictions.

Brazilian PTO’s new Resolution No. 80 of March 19, 2013 sets forth rules for granting priority examination for patent applications related to pharmaceutical products and processes, and equipments and materials related to public health

The Brazilian PTO published Resolution No. 80, on March 19, 2013 in the Official Gazette, which establishes the proceedings for requesting priority examination of patent applications related to pharmaceutical products and processes, and equipments and materials related to public health. We are pleased to hereby enclose a complete English language version of the resolution for your review.

According to the new resolution, now in full force, priority for the examination of patent applications related to public health may be requested by:
(i) The Ministry of Health when the object of the patent is considered strategic to the policies within the National Public Health System (the SUS) — the possibility of having a

The Brazilian Patent amp; Trademark Office (PTO) has recently opened a new Public Consultation, this time on the draft guidelines for the examination of patent applications in the biotechnology field. The Public Consultation was published in the Federal Official Gazette on December 5, 2012 and any interested party may make their submissions within a 60-day-term counted as from that publication date.

The new draft provides more definitions and illustrations on biotech subject matter not expressly mentioned in Law # 9,279/96 (ESTs, primers, SNPs, cDNAs, ORFs, fusion proteins, etc.), indicating whether they would patentable or not in view of the main statutory prohibitions found in articles 10, (IX) and 18, (I) and (III) of that Law.

Operational Rule No. 005/2012 was issued by the Brazilian Patent Office on October 30, 2012, ruling on the interference of the Biosafety Law (No No. 11,105 of 24 March 2005) on the granting of Biotechnology patent applications.

This operational rule came as a consequence of previous Brazilian Patent Office's Notification No. 0182-2012-AGU-PGF/INPI/COOPI-ALB-2.2, published on August 21, 2012 in Official Gazette No. 2,172, which considered not to be patentable subject-matter involving genetic use restriction technologies (GURTs) for plants, as set forth by the Biosafety Law (BL).

This BL establishes, in its Section 6º VII, that it is forbidden to: “use, sell register, patent and license genetic use restriction technologies”, these technologies being defined in the sole paragraph of said section as “any process by which human intervention generates or multiplies genetically modified plants to produce sterile reproductive structures, as well as any manner of genetic manipulation that aims a

The Brazilian FDA (ANVISA) has offered, for public consultation, a proposal of a new resolution relative to the prior consent proceedings applied to applications encompassing pharmaceutical products and processes, as set forth in Section 229-C of the Brazilian IP Law.

This Public Consultation #66 was published in the Official Federal Gazette on October 16, 2012, opening a 60-day term for submission of any comments/suggestions on the changes in the examination procedures that will proposedly be applied by ANVISA in the future. Such term of 60 days started on October 24, 2012, when the proposal actually became available to the public, so that anyone is able to make comments and criticize the proposal up to December 22, 2012.,/pgt;

This comes in consequence to previous opinions raised by the Brazilian Federal Attorneyship (AGU) which stated that, upon complying with the dispositions of Section 229-C, ANVISA should limit their analysis to public health factors and should not examine the app

New Resolution No. 291 published by the BPTO on September 4, 2012 establishes new proceedings for nationalizing, in Brazil, applications filed under the PCT ? Patent Cooperation Treaty ? following Rule 49.6 of such treaty.

Rule 49.6 sets forth that the applicant may reinstate the rights after failure to timely enter the national phase, provided that this failure was unintentional or occurred in spite of due care required by the circumstances having been taken.

The major change introduced by this Resolution is the establishment of the procedures applied concerning PCT Rule 49.6, thus including the possibility of reinstating the rights of the applicant with respect to the national phase entry, if the delay in meeting the 30

It is with great pleasure that we announce the opening of a new office and the admission of a new partner on September 1st.

Our new office is located in Porto Alegre, the capital of the state of Rio Grande do Sul, in the South of Brazil. In the last decades, this region has attracted investments in all areas, which have fostered the growth of new technologies and the development of new businesses.

We are honored to admit to our partnership, as head of the Porto Alegre Office, the renowned lawyer Fabiano de Bem da Rocha, born and raised in the South. Fabiano is a good friend of ours and a bright professional, who is widely admired in Brazil.

After a long period of darkness on this subject, the BPTO has just released an official communication on how the Coexistence Agreements shall be treated. The former BPTO’s Guidelines for the Analysis of Trademarks (issued in May/1997) formally admitted that Coexistence Agreements excluded the application of the norm contained in Section 124, item XIX, of the Brazilian IP Law, which prohibits the registration of marks that are identical or similar to another previously registered for the same or related goods or services, being susceptible of causing confusion or association with the senior mark.

Notwithstanding the fact that this guideline has lasted for over 13 years, it has always been refuted by the BPTO Attorneys’ Office, under the allegation that the Agreement by itself could never override that statutory prohibition. During the discussions for the revision of the BPTO’s Guidelines for the Analysis of Trademarks, which final version was released in December 2010, the BPTO Attorneys’ Office

After a long period of darkness on this subject, the BPTO has just released an official communication on how the Coexistence Agreements shall be treated. The former BPTO’s Guidelines for the Analysis of Trademarks (issued in May/1997) formally admitted that Coexistence Agreements excluded the application of the norm contained in Section 124, item XIX, of the Brazilian IP Law, which prohibits the registration of marks that are identical or similar to another previously registered for the same or related goods or services, being susceptible of causing confusion or association with the senior mark.

Notwithstanding the fact that this guideline has lasted for over 13 years, it has always been refuted by the BPTO Attorneys’ Office, under the allegation that the Agreement by itself could never override that statutory prohibition. During the discussions for the revision of the BPTO’s Guidelines for the Analysis of Trademarks, which final version was released in December 2010, the BPTO Attorneys’ Office

On 20 July 2012, Law No. 12,689, of 19 July 2012, was published in the Federal Official Gazette. This law seeks to create generic veterinary medicinal products in the country and to establish rules concerning the marketing authorisation of such products to be applied by the Ministry of Agriculture, Animal Husbandry and Supply (MAPA).

In brief, two new categories of veterinary medicinal products have been created in addition to the existing reference veterinary drugs: similar (“branded generic”) and generic medicinal products for veterinary use.

According to Law No. 12,689/12, a similar veterinary medicinal product shall mean a medicinal product which has the same active substance, the same concentration and pharmaceutical form as the reference medicinal product for veterinary use, but which excipients may or not be identical, always being identified by its trade mark. Law No. 12,689/12 has apparently not considered a similar veterinary medicinal product to be interchangeable with the re