BRIC by BRIC: Brazil’s backlog builds

With no end in sight for Brazil’s patent prosecution backlog, Brazilian patent attorneys examine the problems and possible solutions for applicants caught in the queue

Often overlooked on the world’s stage as prominent intellectual property markets, the BRICS countries—Brazil, Russia, India, China and South Africa—are increasingly becoming powerhouses of prominence in the business of intangible assets.

But as many speakers outlined at the recent BRICS IP Forum in London, this rise in focus has not moored on easy terms and the increasing importance of an IP infrastructure in the globalised world has led to problems with the often-outdated systems that exist in these countries.

Brazil, like any of the BRICS countries, faces struggles, particularly at the Brazilian Patent and Trademark Office (BPTO), where the patent backlog remains a challenge.

The BPTO didn’t respond to requests for comment on the backlog, but André Bastos Venturini, head of patent prosecution at Daniel Advogados, and Gabriel Di Blasi, managing partner at Di Blasi, Parente & Associados, gave their insights into the situation.

Venturini has more than a decade of experience working with patents and has dealt with the BPTO throughout. He says, these days, with the increased global focus on IP, the BPTO has fallen behind with its work.

“Nowadays, the average backlog for having a patent granted is 11 years,” he says, “Depending on the technical field, backlogs can be up to 14 years.”

Di Blasi says that this affects those in the life sciences and technology sectors the most, with a notable mention of mobile and telecommunications technologies.

He says: “The grant of a mobile technology patent can take up to 14 years—the effect on prosecution times is huge.”

Despite this seemingly colossal problem, Venturini says that the BPTO is doing very little to deal with this backlog and lower prosecution times.

He adds: “It is true that new examiners have been hired, but the problem is not [this]. Productivity is still very low and we do not see any ongoing measures to increase it.”

Taking the high road

Di Blasi says that some measures have been taken by the BPTO to help speed up the process, and the beginning of 2016 saw the creation of a new task force to reduce the backlog via Patent Cooperation Treaties.

Brazil is also pursuing other commitments globally, such as its new Patent Prosecution Highway (PPH) with the US Patent and Trademark Office (USPTO).

Brazil’s agreement with the USPTO allows applicants to fast-track their application, provided the US counterpart application has already been allowed by the USPTO.

There are also rumours that Brazil will enter into PPH agreements with the Japanese Patent Office and the European Patent Office, something that Venturini hopes will be a great help.

But he says: “There are so many limitations to participate in this programme that efficacy is also limited.”

The downside of the PPH with the USPTO is that it only applies to patents that are related to oil and gas and that have been filed in Brazil after 1 January 2013.

Applicants must also adapt the claims pending in Brazil to those that the USPTO allows.

Driving in the fast lane

An alternative the BPTO has put in place to tackle the backlog and ensure specific, important patents are granted quickly, is its wide range of inventor- and patent-specific fast-track options.

For example, if an applicant has at least one claim being infringed in Brazil, it can fast-track its application by gathering evidence and beginning an enforcement action.

Further, patents covering any treatment of cancer, AIDS or neglected diseases would make an application eligible to be fast-tracked.

Usually an indication of this in the patent specification would be enough to avoid a lengthy waiting time.

Any applications filed by seniors or people suffering from physically or mentally disabling conditions are also eligible for the fast-track programme.

Venturini outlined another way to fast-track a Brazilian patent application—through judicial courts.

According to Venturini: “The Federal Constitution establishes that all persons have the right to a reasonable duration of legal and administrative proceedings.”

“It is not hard to establish that waiting several years until the patent office is able to examine patent, trademark and design applications is not reasonable.”

“Instead of waiting in line, some applicants decided to start suing the BPTO in federal courts, challenging them for unreasonable delays.”

“So far, over 40 lawsuits were already filed with the objective of overcoming the backlog at the patent office and, in more than 80 percent of cases, the applicants prevailed and the courts ordered the patent office to examine pending matters within 60 days or less.”

Venturini says that some applicants were even able to obtain preliminary injunctive relief and achieve favourable outcomes in record time.

He says: “While we understand that initiating litigation might not be a viable option for every case, our experience shows this is the best way to avoid important applications and other matters from being stuck at the patent office and can give our clients an important advantage against competition.”

Stuck at the lights

But even in these more specific fast-track cases, there are problems. Unlike in other jurisdictions, both the BPTO and the Brazilian National Health Surveillance Agency, or Agência Nacional de Vigilância Sanitâria (ANVISA), must examine patents seeking to protect pharmaceutical products and processes.

ANVISA is required to give its approval to a pharmaceutical patent before it can be examined by the BPTO, which has been criticised by some as plunging Brazilian patenting into a dark age.

Venturini says: “According to many court precedents, ANVISA does not have statutory authority to examine a pharmaceutical application in view of the patentability requirements established by the IP statute.”

“ANVISA should only be able to deny prior approval to a pharmaceutical application if it is able to show that the product/process covered by the application can create risks for public health,” Venturini explains.

In practice, ANVISA “insists on examining certain pharmaceutical applications in view of the patentability requirements, illegally denying prior approval to many applications”, according to Venturini.

To combat this, applicants must file for a writ of mandamus before a federal district court to make sure prior approval is granted.

ANVISA’s interference in the process seems curious, especially when Venturini says that a petition for writ of mandamus is a “straightforward legal proceeding quickly decided by the courts”.

The objective of the case is to force ANVISA to grant prior approval and send the application to the BPTO for examination.

Venturini says that the vast majority of these cases see a request for preliminary ex-parte injunctive relief being granted before ANVISA is even served with summons.

“Our partners have a proven track record litigating this matter against ANVISA, and according to current case law, the chances of ultimately prevailing are outstanding.”

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