News

Resolution No. 174 published by the Brazilian Patent and Trademark Office on 6 December 2016 established new rules for Brazilian National Phases of PCT applications regarding assignment of priority rights and the assignment of the application.

Currently, there is a relevant discussion on what may be considered as public performance, particularly with relation to streaming activities. While there is a pending case before the Superior Court of Justice (Special Appeal REsp 1.559.264) where it is discussed whether streaming services may be classified as public performances, the lower Courts are already having their saying in this matter.

 It will come into force next Thursday (November 24, 2016) a new resolution issued by CADE (Conselho Administrativo de Defesa Econômica), the Brazilian antitrust authority, that redefines the rules for the submission of “associative contracts” for prior approval.

Further to the ongoing discussion regarding ANVISA

(Brazilian FDA)'s role in the examination of pharmaceutical

patent applications, this is to briefly inform you that the

Attorney General's Office just recently issued the legal opinion number 0006-2015-AGU/PGF/PFE/INPI/COOPI-LBC-1.0 affecting Brazilian PTO's (BPTO) procedure on applications forward to ANVISA for purposes of prior consent approval.

The Superintendency of the Brazilian antitrust authority (Conselho Administrativo de Defesa Econômica – CADE) has recommended the sanctioning of three major automobile manufacturers for infringing the economic order on grounds of an alleged abuse of intellectual

property rights.

The Brazilian trademark registration system is attributive of rights. A registration issued by the Brazilian Patent and

Trademark Office entitles the owner with rights to use the trademark throughout the Brazilian territory, on an exclusive basis.

Published on May 11, 2016, the Decree # 8,772/16 regulates Law #13,123/2015, which provides rules for the access to genetic resources and traditional knowledge and benefit sharing for the conservation and sustainable use of biodiversity.

Kasznar Leonardos Advogados' litigation team, specialized

in Intellectual Property matters, discussed the concrete

implementation of the new Code of Civil Procedure

(effective as of March 18, 2016) in a workshop held in the

São Paulo offices, on March 4 and 5, marking the closing

of a profound cycle of studies on the subject.

On February 18, 2016 the Brazilian Patent & Trademark Office -BPTO enacted Resolution No. 161, regarding the disclaimer adopted in trademark registrations, in an attempt to standardize and bring transparency to the decisions rendered in the trademark application procedures.

As informed in our newsletter 11/15 # 14 the Patent Offices of Brazil and the United States of America instituted a joint PPH pilot program. The details of the program have now been regulated by Resolution 154/2015 of the President of the Brazilian Patent Office, issued on

21 December 2015. A translation into English language of this regulatory instrument is attached here to.

Brazilian law requires that international know-how agreements must be previously registered before the BPTO – Brazilian Patent and Trademark Office, in order for Brazilian companies to be allowed to remit payments abroad.  Moreover, the BPTO of registration also enables Brazilian companies to treat the payment as an “operational expense” for corporate income tax purposes, among other effects.

According to the law, there is no doubt that know-how agreements are submitted to this kind of proceedings. However, the law is not clear concerning agreements for rendering technical assitance services, since, in these cases, the technology transfer may, or may not be present.

The patent offices of Brazil and the United States signed a memorandum of understanding (MoU) that inaugurates a new era of cooperation between them. A copy of this memorandum is enclosed.

A Patent Prosecution Highway (PPH) program is a bi-lateral agreement stipulating that each of the two signing countries may make use of the results of searches and examinations conducted by the other. This allows for faster examination and is specifically aimed at decreasing the backlog that is affecting all offices.

The MoU, signed a few days ago, foresees the implementation of a pilot program that will contemplate 150 patent applications originating from each of the two offices. The program is expected to operate between 11 January 2016 and 10 January 2018 and will accept requests for accelerated examination until this term ends or the application quota is filled.

Acceptance of an application into the program presupposes the fulfilment of some conditions which are not the same for both sides. Most importantly, Brazil will limit its efforts to applications in the areas of oil, gas and petrochemistry that have been filed no more than three years before the starting day of the program. The USA will not impose the same limitations, accepting cases in any technological area.

The implementing rules in Brazil are to be published by the Patent Office in the near future.

Please, contact us should you wish more details on this auspicious initiative.

An update on the matter will be sent as soon as further implementation ruling is announced.

For more detailed information on this matter, please contact us via e-mail through mail@kasznarleonardos.com.

As reported in our newsletter #4 (March 2015), Brazilian Ministry of Justice published a Draft Bill of Law concerning Data Protection. Following a public debate held online from its publication in January until late July, the Draft Bill received more than 2,000 suggestions, duly studied by the Ministry of Justice. After a short period of adjustments, an enhanced version of the Draft Bill was presented on October 20, 2015.

Formally, there was a reordering of the sections, which turned the text more clear and coherent from a systematic perspective, as well as a thorough reanalysis of the terminology. On its essence, the new text partially softens polemic issues of the original version, without losing its coercive strength.

Please find below some of the important changes verified in the new version of the Draft Bill:

In the trial of Special Appeal # 1.512.647 (decided on the 13th of May and published on the 5th of August), the Superior Court of Justice (in charge of standardizing the jurisprudence in Brazilian Courts) provided some guidance on liability of ISP in case of copyright infringement – an issue that was not codified by the Civil Basis for the Internet (“Marco Civil”). In the case at stake, a video producer filed a lawsuit against Google demanding the removal of several Orkut communities that were offering for sale a range of unauthorized copies of educational videos. The producer also requested the payment of damages. According to the producer, Google failed to remove the Orkut[1] communities after receiving a cease and desist letter, whereas Google alleged that such C&D letter did not inform the URLs of the infringing pages.

The Special Appeal was lodged by Google against a decision rendered by the State Court of Appeals of Minas Gerais[2]. This decision ordered the company (i) to pay damages to the producer in an amount to be fixed by an Expert or, in case that was not feasible, in accordance with article 103 of Brazilian Copyright Act[3]; and (ii) to remove the infringing pages. In brief, Google alleged that the company company could not comply with the Court order, as the producer did not inform the URLs of the infringing pages. Moreover, the company argued that it was a case of subjective liability and Goggle did not perform any activity that was deemed as copyright infringement.

Although this case happened before the Civil Basis for the Internet entered in force, the Reporting Justice Luís Felipe Salomão understood that it was desirable to render a decision that was in line with the principles enshrined by that Act. Therefore, he confirmed that it was a case of subjective liability, and underlined that, since the matter was not codified by the Civil Basis for the Internet, the Brazilian Copyright Act applies.

[1] A social network that was owned by Google.

[2] A State in Southeast Brazil.

[3] That establishes a presumption of selling of 3,000 (three thousand) infringing copies.

The Superintendency of the Brazilian antitrust authority (Conselho Administrativo de Defesa Econômica – CADE) has dismissed a case brought against the holder of essential patents related to an international standard in cell phone technology. According to the

bureau, there was no infringement of the economic order concerning the abuse of intellectual property rights.

CADE's Superintendency is the first federal instance to analyze acts of economic concentration, such as mergers and acquisitions, and the occurrence of infringements of the constitutional economic order. CADE, the national antitrust watchdog, is encharged with enforcing the constitutional economic principles, such as free enterprise, freedom of competition, social role of property, consumer protection and the restraining of abusive behavior.

In the present case, the patentee of the international standard cell phone technology was accused of sham litigation and patent misuse, since it had sued the denouncing company, which tried to obtain the due licenses, for patent infringement.