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Monday, 2 February 2015

Speed and efficiency in processing IP applications: has Brazil got what it takes?

"Administrative Procedure in the Brazilian Patent and Trademark Office and the Principle of Reasonable Duration: Federal Court Steps In To Enforce Efficiency" is the lengthy title of a short note by Ana Paula Affonso Brito (Attorney at Law, Montaury Pimenta, Machado & Vieira de Mello, Rio de Janeiro) which was drawn to this Kat's attention by Katfriend and MARQUES stalwart Tove Graulund. It reads in relevant part (with case law citations omitted but available on request):

The principle of the reasonable duration of the administrative proceedings has been highly debated as of late in the Brazilian Courts. In particular, delays in the conclusion of examinations by some Brazilian Public Agencies, including the Brazilian Patent and Trademark Office (BPTO) has been the target of much criticism and some lawsuits.

Faced with item LXXVIII
of the Federal Constitution,
Miffy's mind went blank ...
The doctrine of reasonable duration of judicial and administrative proceedings is governed by Section 5, item LXXVIII, of the Brazilian Federal Constitution, as amended by Constitutional Amendment No. 45, 2004, and states that everyone within the judicial and administrative scope shall be assured a reasonable duration of the process and the means to guarantee the speed of its progress. This principle is further supported by the principle of efficiency which is also governed by the Brazilian Federal Constitution (section 37). Indeed, even before the ... Amendment to the Constitution, Brazilian Federal Law 9784 of 29/01/1999 governing the administrative procedure in the Federal Public Administration was enacted, expressly stating that the Public Administration should be guided by several propositions including the constitutional principle of efficiency.

... the BPTO, as a Federal Entity is subject to these regulations and should answer to all proceedings within a reasonable time in compliance with the law. Unfortunately, this has not been happening in practice. Despite the commitment and dedication of the BPTO examiners, who are surely understaffed given the demands placed on them, the lack of closure in numerous cases has created legal uncertainty and has resulted in logjam of decisions in direct opposition to the efficiency principle.

As a result of this unjustified administrative inertia, the Brazilian Federal Court which is empowered to rule in lawsuits against Brazilian Federal Government agencies (including the BPTO), has stepped in and issued various decisions.

Fortunately, there is precedent in Brazilian case law holding that (i) the work backlog, or the potential priority of other matters cannot be argued as an excuse to indefinitely postpone the resolution of the administrative proceeding ... and (ii) the delay of the BPTO to appreciate registration applications does nothing to bolster legal certainty ...

Moreover, the Brazilian Courts have observed that, in view of the current social and technological environment, no one shall wait for the time taken by the government agencies, especially those responsible for examining new technologies ...

Every applicant's dream,
every examiner's nightmare
Omissions and failures by the BPTO to provide decisions within a reasonable time have been deemed to be an abuse of power, and have resulted in the filing of several Court actions before the Federal Court of Rio de Janeiro, where the BPTO has its headquarters. The outcomes of the cases have forced the BPTO and other Brazilian public agencies to deliver decisions within a reasonable time, and in some instances, preliminary injunctions have been granted by the Court requiring the BPTO to immediately comply with the constitutional principle of efficiency ...
An innocent enquiry from this Kat led to an answer that the time typically taken to examine patent applications is between seven and ten years. Good news for trade mark applicants is that applications breeze through in a comparatively speedy three years -- though that span of time is, as Tove notes, still much too long still for Madrid System international trade mark filing purposes (which may be a good reason why Brazil's name cannot be found among the 93 countries listed as parties to the Madrid Protocol [check here for the 93 countries that are party to the Protocol plus the 55 countries on the Madrid Agreement list].

This Kat is pleased that Brazil is taking steps to get its act together, though he has a feeling that suing the BPTO might sometimes have the effect of slowing the organisation down, at any rate if it expends examiners' time and effort in defending and participating in litigation.  Merpel wonders whether readers have any useful tips to offer the BPTO in speeding things up, though she wonders whether the best way to get things going is to encourage applicants to write shorter, simpler and more intelligible patent applications ...

1 comment:

Bruce Lilling said...

We filed a patent application in Brazil in 2006 and filed the Request For Examination in 2007. Thought 7 1/2 years have elapsed we do not have even a first action. There has been no action yet on this application. BUT they demand that you pay an annual fee every year o lose the case! What Chutzpah.
Brazil counsel did tell us that
Article 20 of Brazilian Industrial Property Law establishes a minimum term of 10 years from the grant date. Therefore, it is guaranteed by law that a patent will live for at least ten years after it is granted
But that of course presumes the patent does eventually issues while the interested parties are still alive

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