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By Gustavo José Ferreira Barbosa

Newsletter 2014.02 – Maintenance of Patents in Brazil – A clear and present danger

Very recently, by means of Resolution 113/2013, the Brazilian Patent and Trademark Office, henceforth the INPI, declared a change in its interpretation of the restoration clause that was inserted by the legislators in Law 9279/96 — the Brazilian Industrial Property Law[1].

This restoration clause gives to those that did not pay an annuity during the regular and extended terms, the opportunity to revive their case after a notice communicating its forfeiture is published.

Until the advent of this new interpretation, a single notice could be published in connection with a set of unpaid annuities. Actually, as the INPI had very little control over the annuity fees that were paid, it was quite common that many years would pass before a notice was published. Therefore, whenever it came to be published, the notice would inform that the forfeiture had been caused by non-payment of multiple annuities, and these would be listed in the published notification.

Now, things have changed. The INPI informally alleged that many applicants and patentees would abuse its lack of control, by waiting for the always delayed publication of the notice, and, only then, paying the annuities due for a case.

Shielded by this oblique logic, the INPI has put forth that the forfeiture due to non-payment of multiple annuities cannot be revoked, that is, the patent or patent application can no longer be restored whenever multiple annuities are left unpaid. This interpretation was quickly adopted, and already several patents and patent application have been declared irremediably forfeited.


[1] Published on 14 May 1996, this law came fully into force one year later. It brought to the Brazilian legal scene many of the formal provisions that would be later inscribed in the Patent Law Treaty, signed at WIPO, in June 2000. Although having signed it, Brazil never ratified this treaty, and many say it doesn’t need to do it, because Brazil’s legislation already is very much in accordance with its provisions.

 

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