1. PATENT PROSECUTION STRATEGY IN BRAZIL
Daniela Fasoli (dfasoli@clarkemodet.com.br)
IP LEADERS IN SPANISH AND PORTUGUESE SPEAKING COUNTRIES

2. AGENDA
 Brazil
 Key Protection Issues
 Backlog and best practice to accelerate granting of
patents
 Recent developments in Pharma cases - ANVISA
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3. BRAZIL
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4. Brazil
Population
193,946,886
Surface
8,515,767 km2
Inflation
5.84% (2012)
Gross Domestic Product (PIB)
US$ 4.4 trillions (2012)
PIB per capita
US$ 12,144 (2011)
Unemployment rate
5.4% (September 2012)
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5. PATENT PROSECUTION
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6. Term of Protection &
Patentability Requirements
Invention
20 years from the filing date OR 10 years from
the date of grant, which is the longer*
Utility
Model
15 years from the filing date OR 7 years from the
date of grant, which is the longer


Inventive Step / Activity

Industrial Application

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Novelty
Sufficient Description (?)
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7. Non-Statutory Subject-Matter
The following subject-matter is not considered to be
protected by a patent:

Discoveries, scientific theories and mathematical models

Abstract Conceptions

Business Methods

Literature, Architectural, Artistic and Scientific Works

Computer Programs

Game Rules

Therapeutic or diagnostic methods (humans or animals)

Essentially biological processes. Natural living beings, in
whole or in part, and biological material, when found in
nature or isolated therefrom
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8. Challenges in the Patent
Prosecution
Amendments
Due to a “strict” position adopted by
the Brazilian Patent Office, any
amendment that extend or change the
scope of protection of the invention,
performed in the set of claims after
requesting examination, is being
objected by the BRPTO.
Divisional applications?
Best/Safest Practices
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9. Challenges in the Patent
Prosecution
Backlog
-New team of examiners (2013)
- 5 different lines for examination:
1. Utility models
2. First filing in Brazil (non PCT)
3. PCT with Brazil as International Authority
4. other PCTs
5. e-PEC applications (Argentina, Chile,
Colombia, Ecuador, Paraguay, Peru, Suriname,
Uruguay
First choice in the lines: priority examination
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10. How to accelerate the granting
of patents
 Potential infringement ;
 Applicant is 60 years old or older;
 The grant of the patent is a condition
for obtaining financial resources from
official national fostering or credit
institutions.
 National emergency or public interest
 green patents -pilot
 preliminary opinion on patentability-
pilot
 cases "of interest of" the National
Health System
 HIV, cancer and neglected tropical
diseases
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11. ANVISA
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12. ANVISA - events
ANVISA
Law 10.196/01
Union's Attorney General (AGU) opinion
- public health issues
Report from the IP Inter-ministerial Working
Group - New flow
New resolution RDC 21/2013
Civil Action aiming at the nullity of AGU’s Opinion
is dismissed by the first instance's judge
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13. Argentina - Brasil - Chile - Colombia - Mexico - Portugal - Peru – Spain - Uruguay - Venezuela
© 2013 Clarke, Modet & Cº. . All rights reserved. Clarke, Modet & Co. refers to the network of subsidiaries of Clarke, Modet y Compañía S.L. each of which is a separate and independent legal entity