The Brazilian Industrial Property Agents Association – ABAPI filed a Public Civil Action seeking discuss about whether it is valid or not an infralegal act of the BPTO’s Resolution No. 113/2013 was created to regulate the procedures related to the control of payment of anual fee for patentes in Brazil.
This Resolution generate disagreement because several patents and patent application have been declared irremediably forfeited due to non-payment of annuities.
The monocratic decision welcomed the request formulated by the plaintiff based on the article 87 to the Brazilian Industrial Property Law (or by the Portuguese acronym, “LPI”).
According to the rule laid down in article 87 to the Brazilian Industrial Property Law (or by the Portuguese acronym, “LPI”):
“The patent application and patent may be restored, if the applicant or patentee so requests, within 3 (three) months from the notification of the dismissal of the application or the extinguishment of the patent, upon payment of a specific fee.”.
Posteriorly, the Federal Court of Appeal for the 2nd Region (TRF2) decided to dismiss the Appeal of BPTO.
On September 04, in the judgment of Special Appeal under Specific Court Regulations nº 1.837.439, The Superior Court of Justice – STJ, the highest Brazilian court for standardizing the interpretation of federal law all over the country – confirmed the understanding of the Federal Court of Appeal for the 2nd Region.
In short, the Minister Ricardo Villas Bôas Cueva understood that “While the article 87 of the LPI allows the patent holder or applicant to request the restoration, within the period of 3 (three) months from the notification, the BPTO’s resolution limits the application of institute to a requirement not foreseen in the LPI.” and concluded that the article 87 creates a new opportunity for a upon payment of a special fee, that is, creates an exception to the rule of extinction of the patent for non-payment
Lawyer Author of the Comment: Sheila de Souza Rodrigues
Headline: Ato infralegal do INPI não pode restringir direito de restauração de patente previsto em lei
“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”