In Brazil, where the average time to grant a patent is 10 years, industrial design is seen by many as a protection mechanism with a simple procedure and rapid grant that takes about one year.
Industrial design, unlike patents, protects the ornamental aspects of three-dimensional objects or two-dimensional prints. It provides a type of protection that is different from patents that protect the technical and/or functional aspects.
However, whether for self-indulgence or even ignorance, many holders are satisfied in having only their industrial design granted. They do not appear to be concerned whether the object of their registration actually has the merits for this purpose. This lack of preoccupation feeds doubt with respect to the vulnerability of the right concerning the registration. When there is a process or action of nullity against the industrial design, it can produce an unfavorable decision resulting in the right having never effectively existed.
One of the preventive measures when there is an innovative design for a product is the performance of a detailed worldwide prior art search before the filing of the industrial design application. This ascertains whether the design is already known or if there are similar designs in existence.
Another measure is to request the BPTO, immediately after the grant of the registration, to issue an opinion with respect to the merits of the design. The BPTO will issue an opinion concerning the registrability, in order to provide an early warning to holder if the object of its registration is not new and/or original. The BPTO recently made an announcement saying that it will also publish in the Official Bulletin, under code 39.5, the "Notification of Request of Examination of the Merits" for requests submitted by holders of registrations from the beginning of 2015. This publication has the main objective of providing greater efficiency in the procedural monitoring of the registration.
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