Brazil: Protection Of Less Inventive Technological Improvements

The correct time to apply for a patent to protect an invention is not always easy to determine. The ideal solution is to delay the filing of the patent application as much as possible, in order to achieve full development, but this is not always possible. In some situations, the applicant, whether individual or legal, are subjected to the risk of seeing his creation exposed before the due protection has been required. A first example is when the invention needs to be tested, technically or commercially, becoming it public. Another example is the necessity to hire professionals or specialized companies to cooperate in the development of the invention. These situations can lead to a premature patent application, which risk is the lack of sufficient technical detail, options or constructive options that may arise during the field research or market demands.

The addition of new technical characteristics in a patent application already filed in the INPI is prohibited by the Industrial Property Law (LPI) .¹.

On the other hand, a second patent for the protection of improvements is not always possible, especially when adjustments, additions or alterations have been made that do not justify an inventive effort. In this case, the improvement can be considered an obvious or common consequence for the person skilled in the art in relation to the previous patent, thus does not result in an inventive or act step, respectively . Of course, these requirements, fundamental to the granting of a patent, have a strong subjective nature, centralizing the discussions on the patentability of industrial creations.

The LPI presents the following protection possibilities on the improvements introduced in the objects of previous patent applications:

1. Internal priority³;
2. Priority based on withdrawn or abandoned patent application⁴ and
3. Addition certificate of invention⁵.

According to the LPI, the conditions for applying an internal priority based on a previous patent application are:

1. Applicable in invention or utility model applications
2. Just for previous application originally filed in Brazil (without priority claim);
3. Previous patent application not yet published;
4. Ensures the right of priority to the subsequent patent application on the same matter filed in Brazil by the same applicant;
5. Due time of 1 (one) year for the patent application of the subsequent patent application based on internal priority;
6. Priority is admitted only for the matter revealed in the previous application, not extending to the new matter introduced;
7. The previous patent application pending will be considered definitively dismissed.

The conditions for applying a new patent application based on a previous patent application withdrawn or abandoned are:

1. Applicable in invention or utility model applications
2. Just for previous application originally filed in Brazil (without priority claim);
3. O pedido de patente anterior não pode ter sido publicado ou servido de prioridade para outro pedido no Brasil;
4. Ensures the right of priority to the subsequent patent application on the same matter filed in Brazil by the same applicant;
5. Prazo de 16 meses para o requerimento do pedido de patente posterior contados da data do depósito ou da prioridade mais antiga;
6. Priority is admitted only for the matter revealed in the previous application, not extending to the new matter introduced;
7. The previous patent application pending will be considered definitively dismissed.

The conditions for applying a new patent application based on a previous patent application withdrawn or abandoned are:

1. Applicable only in invention patent applications;
2. May be devoid of inventive step, since provided that the matter is included in the same inventive concept;
3. It will be rejected if its object does not present the same inventive concept of the previous patent application;
4. Within the appeal period, the transformation of the addition certificate application into a patent application may be requested, benefiting from the filing date of the addition certificate application;
5. The addition certificate of invention is an accessory to the initial patent, has the same final date of validity of the patent and accompanies it for all legal purposes, including being denied if the initial application is also denied.

The table below aims to compare the three possibilities for protecting improvements.

As seen in the table above, in any of the situations there are always benefits and disadvantages, which must be carefully evaluated according to the specific case.

This article tries to emphasize the importance and conditions for applying patents in order to protect improvements with reduced inventive effort that do not meet the requirements of an inventive or act step, indispensable for the granting an invention patent or a utility model patent, respectively.

Footnotes

1 Brazilian Intellectual Property Law - LPI (9279/1996) - Article 32

2 LPI - Articles 13 and 14

3 LPI - Article 17

4 LPI - Article 29

5 LPI - Articles 76 and 77

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.