January 15, 2015
Know how to License in Brazil: A Pragmatic Approach to Cultural and Legal Differences affecting Know How Licensing Agreements
This paper gives an overview on legal, economic and cultural characteristics that are inherent to the Brazilian business scenario and how they affect the negotiation of know how licensing agreements. The Brazilian regulatory framework and the point of view of Brazilian companies can bring out significant issues not expected by their counterparts of other countries or regions. Experience demonstrates that understanding the concepts, reasons and dynamics of emerging economies from their perspective may help U.S. legal professionals to observe relevant factors and get insights to overcome obstacles in the practice of contractual law in a multinational or multicultural environment, in particular when negotiating know how licensing contracts.
January 1, 2015
Legal Elites and the Shaping of Corporate Law Practice in Brazil: A Historical Study, by Jayanth K. Krishnan, Vitor M. Dias, and John E. Pence
This article tells a little of our history, rooted in the extremely active professional life of Richard Paul Momsen, an American lawyer who came to Brazil in the early years of XXth century and founded Momsen, Leonardos & Cia. While Brazil today has a legal market that allows for foreign lawyers and foreign firms, existing regulations are restrictive. Foreign lawyers are barred from practicing domestic law or litigation, and Brazilian-licensed lawyers working for foreign firms or partnering with foreign lawyers cannot do either as well. This was not always the case, however. Until 1963, there was little regulation on the legal profession. Beginning in 1913, elite American lawyers traveled to Brazil, with some even becoming prominent domestic practitioners. They partnered with local elite lawyers (who maintained their domestic privileges) and served as key brokers for U.S. businesses seeking market-entry. Drawing upon the elite theory literature, and on ethnographies, interview data, and over 1,000 pages of rare Portuguese and English archival sources, this study’s thesis is that sophisticated American and Brazilian legal elites capitalized on the lack of regulation to advance their financial interests, and in the process transformed Brazil’s corporate legal sector.
December 10, 2014
Patenting in the Emerging Markets – Brazil – Order and Progress?
Written with Marielle Dejligbjerg, from HOIBERG A/S
Brazil is the world’s fifth largest country, both by area and population, and has the seventh largest economy measured by GDP. The country excels in the production and exportation of commodities like coffee, iron ore, soya, orange juice, tobacco, and cattle; and produces steel, automobiles & aircrafts, computers and petrochemicals. In the last decade a great portion of the population has become prosperous, and in a time where inflation rates are under control, this makes the Brazilian market attractive to foreign investments. In this article we describe peculiarities of the Brazilian patent system, which are of particular relevance for those who wish to enter the market.
November 7, 2014
Newsletter 2014.08 – New Brazilian regulations concerning pharmaceutical trademarks: RDC 59/2014
The Brazilian pharmaceutical regulatory agency ANVISA – National Sanitary Vigilance Agency recently approved new rules for the use of trademarks in pharmaceutical products, through RDC – Resolution of the Board of Directors No. 59, of Oct. 10, 2014.
Such new regulations are very important, inasmuch as all pharmaceutical products in Brazil must be registered with ANVISA for their sale to be allowed. ANVISA not only assesses the efficacy of the product and other health-related technical matters, but it also sets forth how the labeling should be done and it approves the use of trademarks in the package.
As in Brazil there is no linkage between the regulatory registration by ANVISA and the issuance of patents or trademark registrations by the Brazilian Patent & Trademark Office (BPTO), the rules approved by ANVISA are, in practice, the only rules that govern the approval for commercialization and labeling of pharmaceutical products. If there is a conflict between a decision by ANVISA and one by the BPTO (e.g. concerning the risk of confusion between two trademarks belonging to two competitors) it is usually up to the Courts to solve such conflict.
October 28, 2014
Newsletter 2014.07 – ANVISA publishes resolutions on new procedures relative to marketing authorization in Brazil: RDC #58 and #60/2014
The main law regulating the health system in Brazil – Law #6,360 dated 1976 – establishes that each and every drug available in the pharmaceutical market must be approved by the Ministry of Health. Since the creation of the Brazilian FDA (called ANVISA), this autonomous autarchy subordinated to the Ministry of Health is in charge of issuing marketing authorization for drugs for human use and of establishing specific resolutions in order to regulate each of the existing categories of medicaments, such as the new drugs, generics, similars, biologicals.
According to ANVISA’s requirements, the documentation submitted by the manufacturers of both generic and similar drugs, upon applying for marketing approval, is significantly simplified compared to the reference product (the so-called “abridged process”), as only pharmaceutical equivalence and relative bioavailability/ bioequivalence assays are required to obtain approval for products pertaining to these categories.
It should be noted that, since the publication of Resolutions RDC #133 (new applications for marketing approval) and RDC #134 (similars, already approved), both dated May 29, 2003, ANVISA has begun to require proof of therapeutic equivalence also for similar drugs; therefore, it is estimated that all manufacturers of these products will have complied with such requirement by the end of 2014.
Accordingly, studies of pharmaceutical equivalence and bioavailability/bioequivalence became necessary in order to obtain marketing authorization for both generic and similar drugs, although the latter were not then yet considered to be interchangeable with the reference product.
September 15, 2014
INTA’s Latin America Delegation Strengthens Relationships in Three Key Countries – In Brazil, they meet ABPI
INTA delegation is made aware of a pioneer study conducted by ABPI on the economic importance of intellectual property and knowledge-intensive industries in Brazil.
August 19, 2014
Newsletter 2014.06 – The ongoing mass extinction of patents in Brazil: the war against the restoration of patents with annuities in arrears
As we informed in our Newsletter # 2, dated January 2014, in October 2013, the Brazilian Patent Office (“INPI”) enacted Resolution No. 113 to regulate the control of the payment of annuities by patent and patent application owners. Immediately, the Resolution triggered strong reactions from patentees and patent attorneys, in view of its item 13, which contradicts Sections 86 and 87 of the country’s Industrial Property Act (Law No. 9,279/96). It is estimated that such contradiction may have jeopardized the rights of applicants and patentees over almost 10,000 issued patents and 2,300 patent applications.
According to the IP Act, failure to pay annuities shall lead to the shelving of the application or the extinction of the patent (article 86). However, Section 87 allows the restoration of the application or of the patent upon request of the corresponding owner within 3 (three) months from the moment the INPI publishes the notification of shelving or extinction.
- Gabriel Francisco Leonardos
- Pedro Vilhena
July 23, 2014
German Desk Stamp
Kasznar Leonardos is now a German Desk certified office, which means it counts on German speaker professionals who are ready to meet the needs of German companies that may be looking for IP service providers in Brazil.
June 30, 2014
Partner João Luis Vianna represents Kasznar Leonardos at BIO 2014
Partner João Luis Vianna represented Kasznar Leonardos at the BIO International Convention 2014, which took place in San Diego, California, from June 23rd to the 26th. Kasznar Leonardos was a member of the Brazil Pavilion, where João appears below, between Estevão Mano (left) and Norberto Prestes (right), both from the BIO-RIO Foundation. The BIO Convention 2014 had a welcoming reception inside an american aircraft carrier and, yesterday, there was a lunch with lecture by the former US Secretary of State, Hillary Clinton.
June 30, 2014
Newsletter 2014.04 – BPO’s “Green Patents” pilot program to be extended
Launched on April 2012, the Brazilian Patent Office’s pilot program that establishes prioritized examination for the so-called “green patents” has now been extended for a further year, being available up to April 16, 2015.
This program’s purpose is to prioritize the examination procedures of patent applications involving “green technologies”, reducing the current average time for concluding the examination of patent applications – which currently takes more than 10 years – to a promised lag time of about 2 years.
Until now, only Paris Convention filed applications, or Brazilian originated national applications, were eligible to enter into this special program.
The big novelty in extending the “green patents” program is that, in this new phase, also Brazilian national phases of PCT applications can benefit from this prioritized route. These can be either new patent applications, still to be filed, or pending patent applications, already filed at the Brazilian Patent Office. For
June 1, 2014
The building blocks of change
The past couple of years have seen some major developments in how Brazilian courts interpret and enforce trademark law at all levels. This article reviews some of the latest changes related to protection for non-traditional trademarks, the special rule for determining jurisdiction in trademark infringement cases and the administrative seizure of counterfeits by Customs.
The 1996 Brazilian Industrial Property Act (9,279/96) establishes a mixed trademark protection system by which an attributive arrangement grants first-to-file protection rights along with some declaratory system exceptions, such as *bona fide* six-month prior use of an unregistered trademark. Despite general satisfaction with this system, it is a fact that the law admits only the registration of visual-perceptive signs as trademarks (Section 122).
However, this limitation does not mean that non-visual signs which function as trademarks are bereft of protection. The Industrial Property Act sets out a so-called ‘gen