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Madrid Protocol

On October 2nd, Madrid Protocol entered into force in Brazil.

Decree nº. 10,033 of October 1, 2019

And what is Madrid Protocol?

It is a treaty that facilitates the registration of trademarks internationally.

How does the treaty do this?

Through a single application to the World Intellectual Property Organization (WIPO) it is possible to apply for trademark protection in up to 120 countries at the same time.

WIPO forwards the registration application to each country of interest that will perform the trademark examination in accordance with local law.

This international trademark filing provides the possibility of filing a trademark in several different classes.

Classes divide products and services into categories, and you can now register the same brand in different classes at once.

Among the advantages of centralized process management we can consider

1 – Only one language for procedure

2 – Only one currency to pay official fees

3 – Lower costs and bureaucracy

4 – Single process for multiple classes (multiclass system)

5 – Possibility of registration co-ownership

Attention. Although it is a single application, registration application review will still be performed by each country independently.

Thus, registration time is more predictable and easier for depositors.

I9PI team is ready to assist you in this process. Contact us.

Protection of a patent is restricted to the country chosen by its holder. When there is an interest in the production or marketing of the patent technology in other countries, it is necessary to deposit translated copies of this application and each country will be sovereign to grant or not the patent. Once the countries of interest for international filing have been chosen, the holder may choose two ways: 1. Paris Convention  for the Protection of Industrial Property (Paris Convention) and 2. PCT (Patent Cooperation Treaty): The decision of the countries where the holder wishes to protect a particular technology is strategic through cost and benefit assessment. The following video summarizes these international filing possibilities. # i9pi

Non-patentable Matters

Did you know that some materials cannot be patented in Brazil?

These matters are provided for in articles 10 and 18 of the Industrial Property Law (IPL)

What is not an invention? (Art. 10 of LPI)

What is not patentable? (Art. 18 of LPI)

And what is not considered an invention?

I – discoveries, scientific theories and mathematical methods

II – purely abstract conceptions

III – commercial, accounting, financial, educational, advertising, prize draw and supervisory schemes, plans, principles or methods

IV – literary, architectural, artistic and scientific works or any aesthetic creation

V – computer programs

VI – information presentation

VII – game rules

VIII – operative and surgical techniques and methods, as well as therapeutic or diagnostic methods for application to the human or animal body; and

IX – all or part of natural living beings and biological materials found in or isolated from nature

And what is not patentable?

I – What is contrary to public morals, safety, order and public health

II – substances, materials, mixtures, elements or products of any kind, as well as the modification of their properties

III – all or part of living things except transgenic microorganisms that meet the three patentability requirements

Doubts? The I9PI team is ready to assist you. Contact us.

Do you know the conditions for a patent to be granted?

To be granted, a patent must meet three requirements:

Industrial application

Novelty  

Inventive activity

Industrial Application

The invention must be usable or produced in any type of industry.

That is, it must be possible to produce the invention on an industrial scale.

Novelty

The invention cannot be understood in the prior art.

That is, it cannot be described entirely in a single document.

But what is prior art?

Knowledge accessible to the public, in written or oral form, in Brazil or abroad, prior to the filing date of the patent application.

Exceptions – arranged in art. 12 (grace period), art. 16 (unionist priority) and art. 17 (internal priority) of LPI

Inventive activity

For a technician on the subject, the invention cannot be obvious.

Who can be considered a technician on the subject?

Someone who has medium knowledge of the subject at the time of patent application.

This knowledge may be technical, scientific or practical.

Summing up

To be granted a patent must:

1 – be new;

2 – may not be obvious;

3 – be applicable in industry

In the next video…

What cannot be patented in Brazil

Resolutions 240 and 241/2019 published in Industrial Property Magazine nº 2531 of July 9, 2019 aim to reduce the delay in the examination of patent applications in Brazil. The merit exam will be more agile by publishing requirements 6.21 (requests with search and examination abroad) and 6.22 (requests without search and without examination abroad).

Failure to respond to such requirements within 90 days will result in automatic and definitive filing of the patent application.

Applications that meet the requirements will be reviewed. Third Party Observation (TPO) will be possible within the time limit provided by law (until the end of the examination), ie, until the decision to grant or rejection is published. #inpi # innovation #patents

What is a patent?

It is a title that allows exclusivity to an innovation for a certain time.

What does it mean?

The patent holder is the only one who can economically exploit the invention.

Why is this title granted?

The patent is granted in exchange for the inventor to disclose knowledge on how to make the invention.

How long does a patent last in Brazil?

20 years from the deposit.

Or at least 10 years after the grant.

What are the patentability requirements?

Novelty

Inventive activity

Industrial application

Does your invention meet these requirements?

Would you like to know how to protect your idea?

I9PI team is ready to assist you. Contact us.

Freedom evaluation of commercial exploitation

This outline is a simple summary to remember the importance of patent assessment for legal certainty when launching a product (see the FTO video). In addition to enabling development guidance, mitigating the risks of legal action, allowing strategic action both for contouring and planning the appropriate resources (see the video on administrative resources). Feel free to clarify doubts. The greater the knowledge of intellectual property, the greater the ability to innovate safely. # i9pi #intellectual property #inpi #patents #intellectualproperty #sharingknowledge

Did you know that behind each product there may be a patent? Even those who have no interest in filing a patent application need to pay attention to patents in force before a product is launched. Ideally, this assessment should be conducted prior to the start of development or licensing project. Verifying that the product to be marketed is “free for commercial exploitation” requires an assessment known as “FTO”. Check out the following video in a simplified way how it works! # i9pi # patents # FTO

Freedom evaluation of commercial exploitation

Freedom to Operate (FTO)

FTO analysis is required to proceed with researching, developing, and marketing a product without infringing the intellectual property rights of others.

The objective is to assess whether the product to be developed or licensed infringes any intellectual property rights of third parties in the country in which such product is intended to be marketed.

The report is made specifically for your product.

What types of documents are evaluated?

Patent applications, scientific literature and other relevant documents.

The status of each patent application is verified in the country of interest.

Why to request a FTO?

To check out the main patents that may be impeding release.

Assess risk of infringement.

Guide product development.

Identify possibilities to outline important patents (design around)

Evaluate possible partnerships.

Identify need for licensing.

Evaluate the possibility of new patent applications.

When is the best time to conduct a FTO assessment?

Prior to the investment in the product development and/or licensing.

I9PI team is ready to assist you. Contact us.

Prior art search. Search for similar inventions in patent documents, scientific literature, among others.

Drafting of patent application

The order filing must contain application, descriptive report, claims, drawings (if applicable), summary and proof of payment of the filing fee.

Formal Exam. Analysis of the order form and accompanying documentation. Annuity payments must be made from the third year of the filing date.

18 months of secrecy

Publication. Content of the request is made public. May be advanced at the request of the depositor.

Technical examination. Technical analysis of the content of the application for patentability criteria. 36 months from the date of filing for the payment of the technical examination fee.

Decision on the merits of the request. Approval or rejection. Prior to the final decision, INPI may request more information from the inventor (requirements).

If granted, 60 days for payment of patent grant fee.

Patent Grant. The patent is valid for 20 years after the filing date or 10 years after the grant.

If rejected. Appeal against rejection. Filed within 60 days of publication of the decision.

Just as it is important to evaluate which patents may be relevant to the launch of a product (see the FTO video), it is essential to check what already exists in the “prior art”, that is, what the priorities are like an innovation BEFORE filing of a patent application. After this analysis proves that there is novelty, inventive activity and industrial application, it is necessary to write the request and file it with the INPI. And what happens next? This video shows the main steps in the processing of this patent application in Brazil. Feel free to clarify doubts and share this and previous videos. The greater the knowledge of intellectual property, the greater the ability to innovate. # i9pi #intellectual property #inpi #patents #intellectualproperty #shareknowledge

Did you know that before, during and after the examination of a patent application there is the possibility of filing administrative appeals with the National Institute of Industrial Property (INPI)? Check out the following video briefly the possibilities for administrative appeals that owners or interested third parties may submit to INPI during the administrative process of a patent application.

Third Party Observation (TPO)

Goal. Assist the technical examination of INPI by providing relevant documents and information.

They may be submitted from the time of publication of the application until the decision of the technical examination by the depositor or by interested third parties. Exempt cost.

Appeal against rejection.

Filed against the decision rejecting the patent application. Decision on the appeal is from the INPI. Deadline. 60 days from the publication of the rejection decision.

Counterarguments. Submission of arguments by interested parties on the appeal against the rejection. Deadline. 60 days from the publication of the opinion on the appeal.

Post grant opposition. Presented by person with legitimate interest. Decision on the post grant opposition is from INPI and closes the administrative phase. Deadline. 6 months from patent grant.