Answer ... The Brazilian Patent and Trademark Office (BPTO) is the government agency in charge of granting patents for inventions and utility models.
Answer ... Typically, the following administrative fees are due to the BPTO (the listed amounts in US dollars are approximate values and will vary according to the exchange rate. We have used an average exchange rate of $1 = BRL 4):
- Filing of a patent application (invention or utility model): BRL 175 (approximately $45).
- Request for examination of a patent application: BRL 590 (approximately $150) for a patent containing up to 10 claims and BRL 380 (approximately $95) for a utility model.
Annuities within the ordinary term:
For an invention patent:
- Pending application: BRL 295 (approximately $75).
- Granted patent, third to sixth year: BRL 780 (approximately $195).
- Granted patent, seventh to tenth year: BRL 1,220 (approximately $305).
- Granted patent, 11th to 15th year: BRL 1,645 (approximately $410).
- Granted patent, 16th to 20th year: BRL 2,005 (approximately $500).
For a utility model patent:
- Pending application: BRL 200 (approximately $50).
- Granted patent, third to sixth year: BRL 405 (approximately $100).
- Granted patent, seventh to tenth year: BRL 805 (approximately $200).
- Granted patent, 11th to 15th year: BRL 1,210 (approximately $300).
- Grant of a patent application (invention or utility model): BRL 235 (approximately $60).
Answer ... A patent application may be rejected on the following grounds:
- lack of novelty, inventive step or industrial application (Article 8 of the Industrial Property Law (IPL));
- non-patentable subject matter, as per Articles 10 and 18 of the IPL (see question 3.7);
- lack of unity of the invention (Article 22 of the IPL) or lack of a single principal model for a utility model (Article 23 of the IPL);
- lack of enablement. In this regard, the specification must describe the subject matter clearly and sufficiently so as to enable a person skilled in the art to carry it out and to indicate the best mode of execution, where applicable (Article 24 of the IPL);
- lack of clarity and precision of the subject matter to be protected. In this regard, the claims must be based on the specification, characterising the particularities of the application and defining clearly and precisely the patented subject matter (Article 25 of the IPL); and
- if a divisional application is not requested before the end of the examination of the parent application. Further, the divisional application must make specific reference to the parent application and may not exceed the subject matter disclosed in the parent application (Article 26 of the IPL).
Answer ... Applicants may request fast-track examination in the following cases:
- The applicant (a natural person) is more than 60 years old;
- The invention that is the subject of the application is being infringed by third parties;
- The applicant needs a granted patent to obtain funding for exploration of the invention;
- The applicant (a natural person) has a physical or mental disability, or a serious illness;
- The application relates to the treatment of AIDS, cancer or rare or neglected diseases;
- The application is filed by a small entity;
- The application is filed by a science and technology institution;
- The application filed in Brazil serves as priority for applications filed abroad;
- The invention concerns green technologies; or
- The application is filed under a Patent Prosecution Highway (PPH) Pilot Programme. As of 1 December 2019, a new PPH Pilot Programme, with standardised requirements and governed by a single rule (252/19), was implemented. The BPTO has already signed PPH agreements with the patent offices of Japan, Argentina, Colombia, Chile, Costa Rica, Denmark, El Salvador, Ecuador, Nicaragua, Panama, Paraguay, Peru, Uruguay, Europe, the United States, the United Kingdom, the Dominican Republic, China, Austria, Sweden and South Korea.
Additionally, the following parties may request fast-track examination:
- third parties which are accused of unduly copying the subject matter of a patent application;
- third parties that own a technology for which a patent has subsequently been filed;
- the Ministry of Health, where the patent application concerns medicaments acquired by the National Public Health System; and
- the state, where a national emergency is declared or where there is a public interest in the examination of a given application.
In July 2019 the BPTO issued two rules (240/19 and 241/10) that aimed to end the patent backlog within two years. These rules state that the BPTO will use search reports that have already been issued in corresponding patent application proceedings carried out by a foreign patent office to expedite examination.
Answer ... According to Brazilian practice, claims are divided in two basic types:
- product claims (relating to a physical entity); and
- process claims (relating to an activity).
For instance, claims directed to an apparatus, object, article, equipment, machine, device, system, compound, composition or kit are considered product claims. Claims directed to a process, method or use are acceptable as process claims.
Generally, a claimed product must be defined by its own features which are capable of unequivocally identifying it. The Markush structure is acceptable for compounds and biological sequences. Claims directed to a product that define it in terms of its manufacturing process (‘product-by-process’ format) are allowed in exceptional cases where the product cannot be defined otherwise. Method claims must be defined by the steps of the method.
Medical method claims are not accepted. Therapeutic, operating or surgical methods are not considered inventions under the IPL.
The following claim formats are rejected as being directed to a therapeutic method:
- “Method of treating medical condition Y characterised by administering compound X to a subject”;
- “Use of compound X characterised in the treatment of a medical condition Y in a subject”;
- “Compound X being used in a therapeutic method”; or
- “Compound X being used in the treatment of medical condition Y”.
The Swiss style (“use of a compound X in the manufacture of a medicament for treating medical condition Y”) is potentially patentable as a use claim format.
Software per se is not considered an invention. The BPTO does not accept software claims, unless they are redrafted as computer-readable medium claims, comprising instructions to be processed by a processor.
Omnibus claims are prohibited, as well as any citation to the specification and figures in the claims.
Multiple dependent claims are allowed, provided that the dependent claims refer to a single claim category and are drafted in the format “according to any one of the preceding claims/claims X to Y”.
Answer ... There is no mechanism to extend the patent term under the IPL. At the end of the term of protection, the subject matter of the patent falls within the public domain.
However, a specific provision in the IPL exists compensate for delay at the BPTO. The expiry date of a patent invention is 20 years from filing (15 years for a utility model). However, this term cannot be less than 10 years for patented inventions (seven years for utility models patents), as from the date of grant. This provision is automatically applied by the BPTO for all patents in the event of delay.
Answer ... All inventions for new products or processes in all fields of technological application are patent eligible, provided that they meet the requirements of novelty, inventive step and industrial application. An object of practical use, or part thereof, is patentable as a utility model if it is intended for industrial use, presents a new shape or arrangement, and involves an inventive act, resulting in a functional improvement in its use or manufacture.
Nevertheless, Article 10 of the IPL provides that the following are not patentable:
- discoveries, scientific theories and mathematical methods;
- purely abstract concepts;
- schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature;
- literary, architectural, artistic and scientific works or aesthetic creations;
- computer programs per se;
- the presentation of information;
- the rules of games;
- operating or surgical techniques and therapeutic or diagnostic methods for use on humans or animals; and
- natural living beings, in whole or in part, biological materials and natural biological processes.
Further, Article 18 of the IPL states that the following are also not patentable:
- anything that is contrary to morals, good customs or public security, order and health;
- substances, matter, mixtures, elements or products of any kind, as well as the modification of their physical or chemical properties and the respective processes of obtaining or modifying them, where they result from the transformation of the atomic nucleus; and
- living beings, except transgenic micro-organisms that are not discoveries.
Answer ... Any decision of the BPTO may be subject to appeal before the federal courts within five years.