New Regulation proposal for a simplified granting procedure of patent applications is being studied by the Ministry of Industry and Foreign Trade and Services (MDIC) and The Brazilian PTO. Such proposal was placed for public consultation until last August 31st 

The Regulation proposal establishes the rules for an application to be automatically allowed (without the examination on the merits) and would be applicable only for the applications which the filing or the national phase entry petitions have been docketed by the date that the Regulation comes into force. The proposal would drastically reduce the time for patent granting in Brazil through a simplified allowance procedure of patent applications (except for pharmaceutical products or processes).

This message aims to alert you that, if approved as is, eligibility to the New Regulation will be limited to those patents with filing or request for entry in national phase until the date of the New Regulation publication. This alert is being released now due to:

  • Perceptions in the industry are that there is a sound possibility that the proposal will pass maintaining most of its current structure;
  • Possibility that, as public consultation ended on August 31st, the new regulation could be published and in forced still in Q3 2017 (although it is difficult to make any stronger prediction at the moment);
  • Sizeable opportunities that the New Regulation might represent to your IP portfolio and business in Brazil.

Given that, we would like to bring to your consideration some ideas for action that will lead you to be on the safe side for the likely scenario where the New Regulation is published still in Q3:

  • Review your IP strategy for Brazil
  • Map those cases you would benefit from the New Regulation
  • Anticipate filings of new applications in Brazil (along with the submittal of amendments to the desired set of claims, if applicable)
  • Identify, among the cases already filed in Brazil, those you would prefer to be excluded from the new process (e.g., due to strategic reasons) – cases will be automatically admitted in the simplified allowance procedure, exclusions should be requested during the 90 days following publication of admission
  • Define a strategy for requesting exclusion of cases from others – submission of qualified third party observations will lead to exclusion

Please notice it is not possible to guarantee the success of the above actions, but it is our duty to provide you this type of advice. Whenever more relevant inputs come to our attention, or the final format of the New Regulation gets  published, our team will provide an updated point of view.

Clarke, Modet & Co - BRAZIL

Rio de Janeiro
Av. Marechal Câmara, 160, 12º andar (Ed. Le Bourget), RJ 20020-080
Tel: +(55-21) 3223-9500

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.