IP PROTECTION IN LATIN AMERICA BRAZIL Eugenio Goulart.pdf · 26/5/2013 1 IP PROTECTION IN LATIN AMERICA BRAZIL Joaquim Eugenio Goulart May 23rd, 2013 South America's leading economy

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IP PROTECTION IN LATIN AMERICA

BRAZIL

Joaquim Eugenio Goulart

May 23rd, 2013

South America's leading economy

and regional leader;

Vast natural resources and

consumer market;

Brazil | Highlights

Well-developed agricultural, mining,

manufacturing, and service sectors;

Political and economical stability.

© 2011 Dannemann Siemsen. All rights reserved. www.dannemann.com.br

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Brazil | Geography

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Area

Population

200 million

8.6 million km²

World 5th largest country

Main Cities

© 2011 Dannemann Siemsen. All rights reserved. www.dannemann.com.br

São Paulo

Rio de Janeiro

Brasilia (Capital)

4 © Dannemann Siemsen. All rights reserved

Imports (US$ Billion) | 2012 1) China 34

2) USA 32

3) Argentina 16

4) Germany 14

5) South Korea 9

6) Nigeria 8

Exports (US$ Billion) | 2012 1) China 41

2) USA 26

3) Argentina 17

4) Netherlands 15

5) Japan 7

6) Germany 7

Sources: Brazilian Govt/ MDIC / IMF

World 7th largest economy in market exchange rate (2012)

Brazil | Economy: Trade Exchange

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Position Product Value ∆ % 2012/11 % Share

1 Ores (mining) 33,244 - 24,8 13,7

2 Oil and Fuel 30,986 - 0,1 12,8

3 Soy Beans and its products 26,122 8,2 10,8

4 Transport material 24,594 - 2,1 10,1

5 Metallurgic Products 15,556 - 10,51 6,3

6 Chemicals 15,189 - 6,4 7,5

7 Meats 15,266 -42,8 7,3

8 Sugar & Ethanol 15,031 - 8,5 6,2

9 Machines & Equipments 10,573 1,1 4,4

10 Paper & Pulp 6,656 - 7,4 2,7

Brazil | Economy: Exportation

Sources: Brazilian Govt/ SECEX/MDIC


Brazil | Economy: Media

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Brazil | Business Opportunities


PATENTS


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The Brazilian Patent Office is receiving approximately 30.000 new patent

applications per year.

Average time of examination of a patent being presently 6 to 10 years

depending on the technical area.

The Brazilian Patent Office was nominated in 2009 as an International

Search Authority (ISA) under the PCT.


Brazilian Patent Office

Number of examiners – From approximately 100 in 2006 to 273 in 2010. Plans are

to hire additional 165 examiners until the end of 2012 and more 165 in 2013.

Training - close cooperation with the EPO, German Patent Office, UK Patent

Office, Japan Patent Office and USPTO.

Presently 70 examiners are undergoing training.

Brazilian Patent Office


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Brazilian Patent Office – Summary of the Situation


Main current problem: patent backlog

Faster prosecution expected in view of new examiners

Fast track

• Potential infringement cases (warning letter to the alleged infringer)

Article 40 of IP Law – 20 years from filing OR 10 years as of grant, whichever

expires later

Patentability Requirements


Enablement (Sufficiency of Disclosure): Articles 24 and 25 of Brazilian Patent Law

Novelty

Inventive Activity

Industrial Applicability

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Filing a Patent Application


General rule: Translation into Portuguese…

IN CASE OF URGENCY:

Any language; Latin alphabet;

Information about the applicant;

Information about the inventor;

Fulfilled within 30 days.

ATTENTION FOR PCT: Portuguese version of the claims.

Initial Examination


Priority Filing Publication Request for examination

Technical examination

12 months

18 months

36 months

Third parties may present information

for aiding examination

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Amendments during/after examination


DURING THE TECHNICAL EXAMINATION

To restrict the scope of the claims to the examples described in the application

Excluded matter => Divisional application

IP Law Article 32 – “before” the request for examination

voluntary amendments filed after the request for examination are acceptable if the alteration consists of:

a restriction of the scope of protection; or

a correction of minor typing and/or translation mistakes.

AFTER GRANTING

Amendments after the granting – only to correct typos

Divisional: it has the same expiry

date and filing date of the original

application

Certificate of Addition: it has the

same expiry date of the original

application/patent; however the

filing date is different from the

original application/patent

After issuance, interested parties may

request administrative nullity of the

patent within 6 months of issue

Patentee is notified to reply the nullity

request

Intermediary report is issued; both

parties may submit additional

comments

A decision is issued maintaining or

cancelling the patent

Issuance


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Amendment in the IP Law:

Law Nº 10196 of Feb 14, 2001

Art. 229-C

“grant of patents to pharmaceuticals products and processes

are subject to prior approval by ANVISA”

Pharmaceutical Patent Applications


Computer program per se are not patentable in Brazil (article 10, V of the IP Law);

Software is protected by specific law (Law n. 9609/98 – similar to copyright protection;

However, prohibition of patentability is not applicable to method and products that include computer program steps.

Software Inventions


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• Term: 10 years of protection, plus three extensions of 5 years possible, totaling 25 years;

• Requirements: absolute novelty, originality, possibility of industrial manufacture.

• Automatic registration after formalities examination. Examination on merits is possible under request by the applicant.

Nullity proceedings may be instituted ex officio (when contrary to the legal

requirements) or at the request of any person having a legitimate interest within 5

years from grant of the registration

Industrial Designs

TRADEMARKS


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Statistics from BTO

15% 18%

Art. 125 (IP Law): registered

marks considered highly

renown receive protection in all

classes.

Resolution 121/05 (BTO):

highly renown marks are those

which have undisputable

authority, fame and reputation.

Duration: 05 years


Protection of Famous Marks | (Highly Renown)

Evidence:

1) Years of use;

2) Potential consumers;

3) Market share;

4) Spontaneous recognition;

5) Induced recognition;

6) Channels of trade;

7) Geographic extension of use;

8) Channels of promotion/advertising;

9) Years of promotion/advertising;

10) Promotion/advertising investment;

11) Volume of sales;

12) economic evaluation of the mark.

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Protection of Famous Marks | (Highly Renown)

Total of marks currently recognized as highly renown: 26

HOLLYWOOD

HELLMANN’S

TRAMONTINA

PLAYBOY

HAVAIANAS

LAND ROVER

3M

CHANEL

CORAL

NATURA

ITAU

BANCO DO BRASIL

O BOTICARIO

MOCA

KIBON

DERBY

CHICLETS

BIC

DIAMANTE NEGRO

Protection of Famous Marks | (Well-known)


Converse Inc.

vs.

All Star Artigos

Esportivos

(2003)

Art. 126 (IP Law): protects non-registered

marks considered well-know on its field of

activity.

Corresponding application must be filed (60

days)

Case law: use and local famous in Brazil are not requirements.

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Trade Dress Protection


Art. 195 (IP Law): combats unfair competition.

+ Art. 130 (IP Law): combats dilution

Calypso Bay x

Vipi Modas

TJGO, 2003

Red Bull x

Latco Beverages

TJRJ, 2012

Secondary Meaning


Definition: when a descriptive sign acquires distinctiveness through use (trademark function).

IP Law: does not have specific provision (only case law).

Rio de Janeiro Federal Court of Appeals: descriptive words may become marks through the use.

São Paulo Alpargatas S/A

X

Cervera Alpargatas

Sao Paulo State Court of Appeals, 1987

Valls & Cia Ltda (GASTHAUS)

X

Brazilian Trademark Office

Rio de Janeiro Federal Court of Appeals,

1996

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ENFORCEMENT


Dual structure (Civil Cases)

IP rights infringement – State courts

IP validity – Federal courts

Brazilian Court System


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Federal Courts

Lawsuits against Government

agencies

Trademark or Patent Nullity Actions

(BPTO)

State Courts

Lawsuits against private

parties

Trademark or Patent

Infringement actions

B R A Z I L I A N S U P R E M E C O U R T

( C O N S T I T U T I O N A L C O U R T )

Superior

Court of Justice

State Courts of Appeal Federal Circuit Courts of

Appeals

State Courts Judges Federal Judges

Superior Courtsof Justice

Appeals against

violations or

misinterpretation of

Federal Laws

Process patents - reversal of burden of proof

Statutory infringement by equivalency and contributory infringement

Imported product manufactured by patented process is an infringement

Patent applications – collecting damages for acts between publication and grant or prior to publication if infringer duly notified.

Patent Infringement Litigation in Brazil


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Patent Infringement Action


No discovery

Possible prior criminal search and seizure

Seizure of samples

Expert report by judge-appointed experts

Prison terms (3 months to 1 year)

Civil remedies

Search and seizure

Preliminary and permanent injunctions

Damages

Plaintiff’s lost profits

Infringer’s profits

Reasonable royalty

Typical defense

Revocation action Independent lawsuit before a federal court

As a matter of defense in the infringement action

Non-infringement

Patent exemptions IPL 43

performed privately

performed for experimental purposes

preparation of a medicine for individual cases according to a medical prescription by a compounding

pharmacists

products placed in the local market by the patentee or with his consent;

Patent infringement action


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“Therefore, said a patent can be challenged by third parties either by means of a matter of a

matter of defense or by means of an independent cancellation action.”

“As said, the Industrial Property Law allows, in its article 56, that the validity of a patent can be

challenged, at any time, as a matter of defense, which implies the right of a state court judge to

decide the validity of a patent”

“In spite of the fact that article 56 allows the possibility of challenging a patent as a matter of

defense, in my opinion, this article should be interpreted as an authorization to discuss the

validity before the Federal Courts, through a cancellation action.”

(REsp 1132449 / PR - Relatora Ministra NANCY ANDRIGHI - 3ª Turma – STJ - DJe 23/03/2012)

Cancellation as a matter of defense


Same rules:

Dual system:

infringement action filed at State Court

cancellation action filed at the Federal Court (statute of limitation – 5 years from the granting date)

No discovery

Possible prior criminal search and seizure

Search and seizure

Preliminary and permanent injunctions

Damages

Trademark Infringement action


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“Licit is the importation made through an agreement executed

with the owner of the trademark registration abroad. Since

the lower court established that there was no authorization by

the owner of the trademark to import the products, this case

falls in the prohibition of article 132, III of the Law 9,279/96.”

(REsp 1207952/AM Relator Ministro LUIS FELIPE SALOMÃO – 4ª Turma/STJ - DJe

01/02/2012)

Parallel Importation



Tips for enforcement: border control

Customs are

authorized to seize

counterfeits

Only trademarks and

copyrights

National database

(COANA and CNCP)

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How to be effective?

File a petition before the

Customs Administration

Organize training programs

Conduct investigations

Tips for enforcement: border control


Philip Morris (Marlboro lighters)

Brazilian IP Law: modern tools to protect IP rights.

Brazilian enforcement system: different strategies that

provide tailored solutions to any case.

Brazilian Authorities: focused on meeting international

expectations.

Final Message


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Thank you!

Joaquim Eugenio Goulart

[email protected]


mailto:[email protected]

Documents

IP PROTECTION IN LATIN AMERICA BRAZIL Eugenio Goulart.pdf · 26/5/2013 1 IP PROTECTION IN LATIN AMERICA BRAZIL Joaquim Eugenio Goulart May 23rd, 2013 South America's leading economy