Questions and Answers: Patents

First of all, it is advisable to carry out a prior search of the brand to find out if there is already one deposited or registered in the intended area of activity. It should be noted that, in some cases, even if no prior information is available, a more accurate consultation is essential, since the Industrial Property Law provides for several exceptions of signs that cannot be registered (23 only in Article 124 of Law No. 9,279 / 96 ), and these, certainly, if they are consulted considering only the previous one, will not appear in the search, inducing that there is no previous record. The trademark application must be requested in a specific form, the due fee must be collected and certain documents are attached and others are presented for verification, as the case may be. In order to carry out the search or make the deposit, the interested party must go to the headquarters of the INPI or to one of the Precincts or Representations of the Agency, existing in the Brazilian states, or to look for an Agent Accredited by the INPI.

The Patent or the Industrial Design Registry is the correct instrument for this. It is necessary to file an application at the INPI which, after duly analyzed by a Patent Examiner, may become a Patent, valid throughout the national territory. The patent application is formed by the following documents: Own application, Descriptive Report, Claims, Drawings and Summary (if applicable). Before filing the patent application, it is highly recommended that you first do a search for priors, which can be an Individual Search or an Isolated Search. The search is carried out in accordance with the International Patent Classification (for Patents) and the National Classification (for Registries).

It is a temporary title of property granted by the State, by law, to the inventor / author or persons whose rights derive from it, so that this or these exclude third parties, without their prior authorization, of acts related to the protected matter, such as manufacturing , commercialization, import, use, sale, etc.

Due to the differences between the inventions, they may fall into the following natures or modalities: Invention Privilege (PI) - the invention must meet the requirements of inventive step, novelty, and industrial application. Utility Model (MU) - new form or arrangement involving an inventive act that results in functional improvement of the object. There is also the Certificate of Addition of Invention, to protect an improvement that has been elaborated in matters for which an application has already been made or even the Invention Patent. If the industrializable creation is related to the ornamental plastic shape of an object or set of lines and colors, which can be applied to a product, providing a new and original visual result in its external configuration and which can serve as a type of manufacture, if an Industrial Design Registration is required, as in that case it cannot be considered a patent.

A matter that does not fall under the legal prohibitions and that meets the legal requirements of the Arts is patentable. 8 and 9 of the LPI (Industrial Property Law), that is, the invention must be provided with novelty, industrial use, inventive activity and descriptive sufficiency; the Utility Model (MU) must be provided with novelty, industrial use, inventive act and descriptive sufficiency. MU protection can only be granted to an object of practical use (with processes and systems excluded) that entail an inventive act (it does not occur in a common or vulgar way in the state of the art, analyzed by a technician in the subject) resulting in functional improvement in its use or manufacture. The drawings are mandatory and the application must also present the best form of execution. You cannot patent a process as a Utility Model, only as a patent for Invention 1.

The matter covered by Article 18 of the LPI (Industrial Property Law), namely: any invention contrary to morals, good customs, safety, order and public health, matters relating to the transformation of the atomic nucleus and all or part of beings except for transgenic microorganisms. In addition, according to Art. 10 of the LPI, several matters are not considered inventions or Utility Model (one must carefully analyze all the content of the mentioned article!) As an example, we can mention: business plans, health care plans, insurance, discount schemes in stores, as well as teaching methods, architectural plans, works of art, music, books and films, as well as presentation of information, such as posters or stickers with the portrait of the owner. Nor can patents be granted for abstract ideas and inventions that cannot be industrialized. Some of these creations can be protected by Copyright, which has nothing to do with the INPI.

Computer programs, in themselves, are protected by copyright and not by patent law. However, the granting of invention patents that include computer programs for processes or that integrate different equipment, has been admitted by INPI for many years. This is because an invention cannot be excluded from legal protection due to the fact that, for its implementation, computer programs are used as technical means, provided that the requirements of novelty, inventive step and industrial application are met. Thus, the computer program itself, that is, one that does not have a technical effect, is excluded from patent protection, whereas if such a program technically alters the functioning of the machine on which it is run, this control process or the machine resultant, you can configure a patentable invention. Computer programs may, at the discretion of the holder of the respective rights, be registered with the National Institute of Industrial Property - INPI according to article 1 of Decree no. 2,556, of April 20, 1998. The registration of software is a way of assuring its author his exclusive rights in the production, use and commercialization of his creation, maintaining the confidentiality of the information registered with the INPI.

The Paris Union Convention (CUP) concluded in 1883, constituted the first international milestone for the protection of Industrial Property among the different signatory countries. Brazil was one of the first 14 to adhere to this convention. Several changes were made to the 1883 text through 7 revisions. In 1992, through Decree no. 635 Brazil has fully adhered to the text of the Stockholm Review, the latest revision of the CUP.

Any natural or legal person, as long as they have the legitimacy to obtain the Patent. The depositor is a legitimate assumption to apply for the Patent; it is not necessary to present the Assignment Document, but he must have it. The conditions for the ownership of a Patent are established in Arts 6 and 7 of the LPI (Industrial Property Law).

The Invention Patent will be in force for a period of 20 (twenty) years and the Utility Model for a period of 15 (fifteen) years from the filing date (Art. 40 of the LPI).

The patent holder has the right to prevent third parties, without his consent, from producing, offering for sale, using, importing the product covered by the patent or the process or product obtained directly by the patented process (Chapter V, Title I of the Industrial Property Law) ). Third parties may use the invention only with the permission of the holder (license).

The patent is valid only throughout the national territory (principle enshrined in the Paris Union Convention - CUP). The existence of regional Patents (ex: European Patent) is no exception to the principle, as they are the result of specific regional agreements.

There is only one way to do it: directly in the country where you want to obtain protection. As a way of simplifying this procedure, the inventor can choose the PCT system where from an initial deposit in a PCT member country (Brazil being one of them, this deposit can be made at the INPI), the countries he chose to request are designated your Patent. The inventor will receive an international search report, which should assist him in the decision to enter the entry of the documentation for the patent application in each country. The inventor has a period of twenty or thirty months, in cases where he has requested an international preliminary examination, for this entry into the national phase, counted from the date of international deposit. Thus, the entry of a PCT application does not guarantee an international patent, but it simplifies the process basically by providing a search report, preliminary examination (if requested by the inventor) and an extension of the deadline for the entries of the national phases when compared by the traditional patent system that provided only 12 months for this task.

It is preferable to always deposit beforehand. However, if there is a need for the previous disclosure and for the novelty not to be harmed there is the Grace Period, which allows such disclosure before 12 (twelve) months of the deposit for Inventions and Utility Models. Disclosure by the inventor, when it occurs during the twelve months preceding the filing date, will not be considered as state of the art. Therefore, such disclosure cannot invalidate a deposit made by the inventor himself within this twelve-month grace period. However, a second person, having knowledge of such disclosure, should he request a patent application for the same matter, prior to filing the inventor, although he cannot obtain the patent because it has already been disclosed, he may use this second deposit against the novelty of the filed application. by the inventor. In this case, the deposit made by the inventor may be rejected due to lack of novelty, in addition some countries do not recognize this grace period, so the safest way to protect yourself is for the inventor to make the disclosure only after making the deposit with the INPI . It is recommended to state, on the deposit form itself, the conditions of this disclosure (Art. 12 of the LPI). The Grace period does not incorporate that of the unionist priority. Watch out! Many countries do not recognize this grace period.

Basically, the system promotes the progress of the technique for two reasons: by providing an incentive to the inventor to continue his research once the investment protection is guaranteed and secondly by encouraging his competitors to seek technological alternatives to conquer the market that do not use patent exploitation licenses. With the disclosure of the invention by the patent document, society benefits from the knowledge of a technology that would otherwise remain a trade secret.

No. Once the validity period has elapsed, in the case of non-payment of an annuity, in the case of non-exploitation of the patent or waiver of the holder, the rights of the holder cease, making the invention a public domain, so that any person can use it freely.

No. What the depositor has is an “expectation of right” that will only be confirmed if he obtains the patent. If the depositor is suffering losses due to unfair competition from someone who is producing the same object of his invention, the depositor may contact such competitor notifying him that, if the competitor insists on the unfair practice, he may, when he obtains the Charter, bring a lawsuit for damages, which may be counted from the date of publication of the patent. In this case, early publication is useful for the purpose of determining this date. Additionally, in view of the economic losses suffered, the applicant may request a priority examination of his application.

No, because, according to Art. 18 (III) of the LPI, all or part of living beings are not patentable. And in the case of plants or seeds in their natural state, that is, not modified by humans, they are not even considered an invention under Article 10 (IX). New varieties of plants, in their reproductive parts, are protected by another instrument, Law no. 9456/97 - Law on Cultivars, managed by the National Cultivar Protection Service (SNPC), belonging to the Ministry of Agriculture and Supply.

Yes, especially when the inventor has several patent applications and does not have the availability to deal with the deadlines and procedures of each one. Normative Act no. 141/98 establishes that only individuals or legal entities registered with the INPI, duly evaluated by a committee composed of members of the INPI and ABAPI, can act as attorneys-in-fact to third parties.

No. All requests are handled in strictest confidence during the eighteen-month period (unless the depositor requests advance publication) until the period of publication in the Revista de Imóvel Industrial (RPI).

No. The advance publication is useful for the depositor only for the purpose of indemnities related to a counterfeit he is suffering, since these values are calculated from the date of publication of the application.

No, the patent examination does not include any practical test. However, the invention must be sufficiently described, allowing a person skilled in the art to reproduce the invention. Otherwise, the depositor will not obtain the Letter-Patent. Even if this is granted, improperly, the holder will have a “weak” patent, that is, the object of nullity ex-officio filed by the INPI itself or by third parties, at any time.

Yes. Once the patent application has been published and until the end of the exam, the presentation of documents and information to support the exam will be allowed by interested parties. The date of the technician's conclusive opinion on patentability is considered final examination. If the request is accepted, it will still be up to third parties, for a period of six months, to submit an application for administrative nullity. If the application is rejected, the applicant has 60 days to appeal against the refusal. In these two cases, new documents may be submitted to support the examination.