NEW INDUSTRIAL PROPERTY LAW IN BRAZIL
LAW NO 9279/96
NEWS CONCERNING PATENTS

In this Newsletter you will find detailed description of the novelties brought about by this new Law in Industrial Property in what concerns both formal and material matters referring to patent prosecution in our country.

This introductory page will enable you to identify which of the listed subject(s) you wish to get information on, and indicates the page in which you may find useful information

INDEX

1. PATENTABLE SUBJECT-MATTER
   
   

2. FILING OF A PATENT APPLICATION
   Formalities
   Priority document
   Ownership
   Grace period
   Internal priorities
   Deposit of biological material
   Best mode
   Biotechnology applications
   Power of attorney
   
   

3. PROSECUTION OF A PATENT APPLICATION
   Secrecy period
   Amendments
   Request for examination
   Opposition period
   Divisional applications
   Office actions
   Appeals
   
   

4. PATENT GRANT, TERM AND PROTECTION CONFERRED
   Granting
   Term
   Protection conferred
   
   

5. PATENT NULLITY
   
   

6. LICENSES
   Voluntary Licenses
   Compulsory Licenses
   
   

7. CERTIFICATE OF ADDITION OF AN INVENTION
   
   

8. ANNUAL FEES
   We refer to our previous Newsletter, No. 137, which addressed the novelties brought about the new Industrial Property Law in Brazil, No. 9279/96, which was put in full force on May, 15, 1997.
   We feel obliged to return to this subject, now that the Law in is full force, bringing important information concerning how this Law has been put to work, by means of the Patent Office's Normatization.
   
   

1. discoveries, scientific theories, and mathematical methods;
   

2. purely abstract concepts:
   

3. commercial, accounting, financial, educational, publicity, raffle and supervisory schemes, plans, principles or methods;
   

4. literary, architectural, artistic and scientific works, or any aesthetic creation;
   

5. computer programs as such:
   

6. presentation of information;
   

7. game rules;
   

8. operatory or surgical techniques and methods, as well as methods of treatment and diagnosis for application to the human or animal body; and
   

9. he whole or part of natural living beings and biologic materials encountered in nature, or even if isolated therefrom, including the genome or germoplasma of any natural living being, as well as natural biological processes.
   
   

1. whatever is contrary to morals, good habits, as well as to public health, security, order, and health;

2. substances, materials, mixtures, elements or products of any kind, as well as the modification of their physical and/or chemical properties and the respective obtention or modification processes, when resulting from the transformation of atomic nuclei; and

3. the whole or part of living beings, except transgenic microorganisms which comply with the three requirements of patentability - novelty, inventive activity and industrial applicability - foreseen in art. 8, and which are not a mere discovery.
   

2) FILING OF A PATENT APPLICATION

Formalities
An application that does not formally comply with the required provisions (layout, completness of the application, bearing the specification, claims, abstract, drawings - all in Portuguese Language) but contains data concerning the applicant and the inventor, along with a description and drawings, enabling the perfect identification of the object, may be delivered to the Patent Office and this Office will establish the requirements to be complied with, in the form of an office action, within 30 days of their acknowledgment.

This will also allow presenting an application in foreign language (provided in Latin alphabet), the translation having to be presented in the same form as above (please note that this will not apply to the entry of Brazilian national phases of International applications, inasmuch as, since their international filings, according to article 11 of the PCT, such applications are already Brazilian applications)

Priority document
The priority document must be presented within 180 days from filing (in regular filings) and 60 days from the entry of the Brazilian phase (PCT applications) no longer being necessary to present a public sworn translation to Portuguese thereof; it is enough to present the document itself together with a simple translation of the identifying data. Regarding the Brazilian phase (PCT applications) it will not be necessary to submit to the Patent Office the priority document itself, it being enough to file information concerning the filing date of the priority application, provided the priority document filed during the international phase within 16 months counted as of the priority date.

However, whenever the priority document's applicants are distinct from the Brazilian application's, an assignment showing such alteration will have to be presented before the Patent Office under penalty of loosing the priority right.

Ownership
In the absence of proof to the contrary, the applicant is presumed to have the rights over the filed application, thus no longer being necessary to present the inventors' authorization in favour of the applicant. It should be noted that an assignment of the priority rights will always be necessary whenever the applicant in Brazil is different from that regarding the priority application.

Grace period
A 12-month (prior to filing or priority claim) grace period is admitted.

Internal priorities
Internal priorities are admitted for applications originally filed in Brazil, not claiming priority and not having been published.

Deposit of biological material

Whenever it is essential to deposit biological material for the practical execution of the subject-matter of the application, said deposit should be made in any Institution duly authorized by the Patent Office.

In the absence of a Institution located in our country authorized by the Patent Office, applicants will be allowed to effect the deposit with any one of the deposit authorities accredited by the Budapeste Treaty

Best mode

In the specification, whenever applicable, the best mode of execution of the invention should be indicated

Biotechnology applications

There are specific provisions for applications in the Biotechnology area, specially concerning the drafting of applications claiming microorganisms and DNA sequences. Upon your request, we can forward to you the relevant Normative Act's extract, addressing this issue.

Power of attorney

The power of attorney must be filed within 60 (sixty) days counted from the practice of the first act by the party in the process, under penalty of definitive abandonment of the application; the power of attorney must concede powers of representation both in the administrative and judicial spheres and to receive judicial summons.

3) PROSECUTION OF A PATENT APPLICATION

Secrecy period

The application is kept under secrecy for the period of 18 months counted from the filing date or of the earliest priority, after which it is published; this publication can be anticipated on the applicant's request.

Amendments Voluntary amendments can only be presented prior to requesting examination and if they are limited to the subject-matter initially disclosed.

Request for examination The examination must be requested within 36 (thirty six) months from the filing of the application; cases already published upon entry into force of the new Law (May 15, 1997) may benefit from the term already in course for requesting examination which, according to the old law, was of two years counted from publication; thus, on such cases, applicant may choose from two options:

   - 2 years from publication
   - 3 years from filing

whichever is most advantageous for the applicant

If the examination is not timely requested, the application is abandoned; from the publication that declares the application abandoned, there will be a 60-day term during which the case may be reinstated, by paying a fine.

The end of the examination is deemed to be the date of the conclusive opinion report regarding patentability, or the thirtieth day prior to the publication of the decision of acceptance, rejection, or definite abandonment, whichever occurs the latest.

Opposition period

Instead of the opposition period of 90 days counted from the publication of the request for the examination, as per the old law, it is now possible to present arguments/documents that may aid in the examination at any time, from the publication of the application up to the termination of the examination.

Divisional applications

The patent application may be divided into two or more before the examination is ended, either on request from the applicant or in compliance with an office action.

Office actions

When the office action is issued consequent to non-patentability or inadequacy of the application concerning the protection claimed, the applicant shall have to reply within 90 (ninety) days, otherwise the case will be definitely abandoned; formal office actions will have to be complied with within 60 (sixty) days.

Appeals

From a rejection decision, an appeal can be filed within 60 days; there is no possibility of filing appeals against an allowance decision.

4) PATENT GRANT, TERM AND PROTECTION CONFERRED

Granting A Patent is granted upon its allowance and payment of issuing fee; this fee must be payed within sixty (60) days from allowance or, independently of any notification, and via a specific fine, within the 30 subsequent days; IF SUCH PAYMENT IS NOT TIMELY EFFECTED, THE CASE IS DEFINITELY ABANDONED.

Term

A patent of invention (PI) will live for 20 years counted from filing and a utility model patent (MU) for 15 years from filing; however, the life term will not be less than 10 years for PI and 7 years for MU, counted from grant.

Protection conferred

The extension of the protection conferred by a patent will be determined by the claims' content.

The patent confers the right to prevent third parties from manufacturing, using, offering for sale, selling or importing for such purposes without the applicant's consent the product object of the invention, and the process, or product, directly obtained by a patented process.

The prevention of contributory infringement by third parties is also foreseen in the new Law.

Whenever infringement occurs the patentee has the right of obtaining compensation of losses and damages, retroactively to the date in which, during prosecution, the application was published.

5) PATENT NULLITY

Nullity of a patent can be requested, ex officio or at the request of a third party with legitimate interest, either in the administrative sphere (within 6 months from the granting of the patent), or judicially, via an ordinary action, at any time during the term of a patent.

6) LICENSES

Voluntary Licenses

A patentee may request the Patent Office to place his patent on license offer submitting to the Patent Office copy of the licensing conditions; a patent under offer will have its annuities halved during the period between the offering and the granting of the license.

A license contract must be recorded at the Patent Office to produce effects with regard to third parties, and will produce said effects as from the date of its publication. In terms of proof of use, the license contract does not have to be recorded at the Patent Office

Compulsory Licenses

A patent will be subject to a compulsory license if abuse of the patentee's rights or economic power occurs.

A compulsory license may also occur consequent to:

1. non-exploitation, lack of or imcomplete manufacture of the product, lack of complete use of a process patent, except when exploitation is economically inviable, when importation is admitted;
   
   

2. commercialization that does not attend the market's needs.