From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 7 April 2016

Life as an IP Lawyer: São Paulo, Brazil

The AmeriKat's professional life, be it on the Kat or sat at her desk litigating her hours away, involves a huge amount of coordination, support and opposition with lawyers from all over the world. One of the IPKat's key objectives is to bring this global IP community closer together by sharing IP decisions, legislation and practice from across the world with our readers, with the aim that by understanding our unique perspectives on the culture of IP practice we can work together to make IP a success story for innovators, creators, users and the public. With those grand aims, the AmeriKat thought it would be worthwhile to ask the next generation of global IP lawyers to illuminate IP practice in their jurisdiction, as well as to give readers some fun reading on their commute home...


For the second in the series, we travel 6,000 miles southwest over the equator to the tropical climate of São Paulo, Brazil where Fabio José Zanetti de Azeredo (Salusse Marangoni Advogados) battles frustrations with delays at the Brazilian PTO, monitors how technological advances will fair with the government and dreams of taking a famous inventor to the Smithsonian.

Fabio Jose Zanetti de Azeredo
What can you see from your office window right now?

Looking through my window there is a view of Paulista Avenue, considered one of the most important business areas of São Paulo and also the cultural and entertainment hub of the city. São Paulo is Brazil’s largest city with 12 million inhabitants and every day about 1.5 million people commute to Paulista Avenue. The Avenue is home to the headquarters of large corporations and more than 20 embassies and delegations of foreign countries.

When did you know that you wanted to pursue a career in IP?

I got into the IP area by chance. In my early years of law practice I was dedicated to criminal law. At that time I joined a law firm which was dedicated to corporate law in general and wanted to create a criminal law area. Due to the nature of their clients, most of cases I dealt with were related to IP which fascinated me. After a year, I left criminal law and joined another law firm specialized in IP and began working in the consultancy and administrative areas of IP.

Walk us through a typical day...

I wake up at 6:30 AM and after taking my kids to school I do some physical activity (swimming, gym or running), then get to the office around 9 or 9:30. At work, one day is never like another, but on a regular basis I have trademark availability searches to conduct, legal documents to prepare for clients or for filing before the Brazilian Patent and Trade Mark Office and meetings with clients.  Usually I have around an hour for lunch where I meet with friends or, if I’m lucky, enjoying some cultural activity.  Depending on how things go, I leave the office at 7:30 or 8 PM.

What are the key differences in your system that clients/other lawyers from outside the jurisdiction find surprising or strange?

Not something to be proud of, unfortunately.  I would dare to say it is the sluggishness of the Brazilian PTO.  It currently takes three years to render decisions for trademark applications - if there are no oppositions or other objections - and at least ten years for patent applications. Also, some judges lack IP expertise.  Although most upper Courts have specialized chambers, local judges have few opportunities to get to know the characteristics of intellectual property rights.

Fabio's view towards the streets of
Sao Paulo
What are the key challenges that are facing the next generation of IP lawyers in your jurisdiction? How are those challenges different from the previous generation?

Over the past few years modern Brazilian society has faced a rapid number of changes in the way we interact with one another and do business. These developments have been and will continue to be challenging for lawyers, as the legal system has not been updated and structured in a way to encompass and deal with new technology.  Lawyers in Brazil, therefore, have to be skilled in filling the gap by developing creative legal arguments.

What are the misnomers that people have about IP practice in your jurisdiction?

One misconception I face most is the assumption that protecting IP assets is merely an expense and not a generator of value.  It can often be difficult, especially in Brazil, to convince businesses that IP protection is actually an investment that will not only save money in the future but generate it.  Although this perspective has existed in Brazil for a while, it has arguably become more pronounced recently as Brazil is going through a huge political and economic crisis.

If you could change one thing about IP practice in your jurisdiction, what would it be?

The confusion associated with the scope of protection for company names. Although Brazil is a member of the Paris Convention, which in accordance with Article 8, guarantees protection to foreign companies’ trade names (from any member-state of the Union), Brazilian Civil Code provides that a trade name of a Brazilian company is restricted to the State or City of its business address.
Much worse, Brazil is a country of continental proportions composed of 27 different States and up to 5,000 cities. Each State has its own Register of Companies - where corporations are enrolled - and most of the cities have Notary Publics - where non-commercial companies are enrolled. The database of each Register of Companies and each Notary Public is independent which leads to a diversity of names and confusion as to protection.

What gives you the biggest thrill in your job?

First, I feel rewarded because I work with people from all over the world. I was always fascinated with getting to know different people, their cultures and languages.  IP practice gave me the opportunity to achieve this. I can imagine few other jobs that would have enabled me to indulge this passion.  Second, IP allows me to be in touch with the cutting edge of innovation and creativity.

São Paulo Cathedral
What are the top trends and/or cases that we should be looking out for in your jurisdiction in 2016?

Some IP-related aspects in connection with new technologies, social media and data protection. For historical reasons, the Brazilian government has been meddlesome in many different areas of exciting technology.  Recently, Brazilian Courts have rendered some contradictory decisions in relation to these themes and, in some cases, with severe consequences to Brazilian society (such as Uber being banned in some cities and Whatsapp being suspended for one day, among others).

To be successful in your jurisdiction, what are the key skills a young IP lawyer needs?

From my point of view, in Brazil, creative thinking is crucial in order to devise different solutions to new problems, and the endurance for pursuing them is a must.

What are you going to/what did you eat for lunch today?

Today I had lunch with my office team mates in a Brazilian restaurant. I had a traditional Spanish dish called paella. Since Sao Paulo is a cosmopolitan city there are many different cuisines to try, such as Mexican, Italian, Japanese, Indian, etc. Every once in a while, I try to cover them all.

What other jurisdictions do you work with the most in your practice?

I am most frequently in contact with foreign agents from the U.S., Canada, South America and England.

Looking into your crystal ball, where do you see the profession in 10 years’ time?

I tend to believe that within a decade in Brazil there will be a larger number of IP lawyers and even larger opportunities to practice IP.   Brazil is a developing country which still needs to spread and enforce the culture of IP in its territory. For many years, despite the fact that Brazil was one the top 10 economies in the world, it has often ranked in 27th or 30th position of nations who file the most patents applications abroad.

If you could practice IP law anywhere else in the world for a year, where would that be and why?

That’s a tough one, but for professional reasons, I would love to work in the U.S. or European Union and experience practice in highly developed IP systems.

Flying man Alberto Santos Dumont
If you could have lunch with someone famous in the IP world (judge, lawyer, inventor, politician, alive or dead), who would that be and why, and where would you take them?

I would invite Alberto Santos Dumont, a Brazilian inventor who lived from 1873 to 1932. He invented the first airplane that took off unassisted (not to mention the first man to fly a plane, despite the Wright brothers’ controversy) among other flying machines. Concerned with the improvement of technology, he decided not to protect his inventions so that others could use them and surpass him. As a consequence, his final years of life were lived modestly. I would like to ask him about his take on the IP system nowadays.

I would take him to visit the Smithsonian National Air and Space Museum in Washington, D.C., reputed to be the best aviation museum in the world, so that he could get to know his legacy; if we had time, we would have a snack in the cafeteria.

What is the best piece of advice you have ever been given?

Don’t be dismayed by the size or complexity of the task you have to work on. Work hard to find a solution. If it was easy to work out, no one probably would have asked you; they would already have solved it.

If our readers were to come to your city, what are the top three things you recommend they see, do and eat (in that order)?

To see: downtown area where the city was founded, where you can admire the architecture of the old city (such as the Municipal Market and the historic Jesuit church and school, Pateo do Collegeo, which marks the site where the city was founded in 1554). To do: enjoy the bohemian life of the city in the bars of the Vila Madalena neighborhood. To eat: at the cosy and charming restaurant Skye at Unique Hotel.


civilian said...

"It currently takes three years to render decisions for trademark applications" What? Is this a joke? This should be unacceptable for a PTO.

Michael Factor said...

Interviewing practitioners around the world is a brilliant idea

Ashley Roughton said...

Sao Paulo, a place I have visited many times, has some of the world's best restaurants and in the JK Iguatemi shopping mall, one of the finest laid out and designed bookshops I have ever encountered. The use of space is amazing and inspiring.


Meldrew said...

Civilian said "It currently takes three years to render decisions for trademark applications" What? Is this a joke? This should be unacceptable for a PTO.

On a patent filing series I find it interesting to guess whether Brazil or India will be last to grant.

Not all BRICS sink without trace, but these two are pretty heavy.

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