BRAZIL Law and Practice Contributed by: Fabiano de Bem da Rocha, Gustavo Bahuschewskyj Correa, Kamille Trindade Machado and Milton Lucídio Leão Barcellos, Leão Intellectual Property
1. Patents 1.1 Legal Framework and Patentable Subject Matter Patent protection in Brazil is mainly governed by the Industrial Property Law (Law No 9,279/1996, as amended) and implementing regulations and guide- lines issued by the Brazilian Patent and Trademark Office ( Instituto Nacional da Propriedade Industrial – INPI). The case law also helps to better understand the interpretation of the patent requirements (eg, patent- able subject matter, novelty, inventive step and suf- ficiency of disclosure). Brazil is a member and follows the rules of the Paris Convention, the Patent Coopera- tion Treaty (PCT) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”). Brazil provides two main patent rights: • patents of invention ( patente de invenção – PI); and • utility model patents ( modelo de utilidade – MU). Patentability generally requires novelty, inventive step (or “inventive act” for utility models) and indus- trial application. Both patents and utility models are subject to previous examination related to formal and substantive grounds. The law excludes certain subject matter (eg, discov- eries, abstract ideas, mathematical methods, busi- ness methods, computer programmes “as such” and methods of surgery/therapy/diagnosis). In practice, software-related and AI-related inventions may be patentable where the process/method and/or system claims are directed to a technical solution with a tech- nical effect, rather than to an algorithm or computer programme per se. Brazil does not have a European-style European Pat- ent Office (EPO) system. There is also no patent term adjustment (PTA)/supplementary protection certificate (SPC) or other patent term extension (PTE) available beyond the 20-year patent term for inventions and 15-year patent term for utility models (See Brazilian Supreme Court Decision of 2021 – ADI 5529).
1.2 Patent Granting Procedure Patents are examined and granted by INPI. A typi- cal prosecution flow includes filing (directly in Brazil for residents, using the Paris Convention or the most common track using the PCT route with national phase application), formal examination, publication (generally after an 18-month confidentiality period) and substantive (technical) examination. A request for examination is mandatory and must be filed within 36 months from the filing date (or earliest filing/priority in Brazil, depending on the route). Since 2024, INPI has indicated that it may prioritise exami- nation according to the date the examination request is filed, which can make earlier requests strategically relevant. Foreign applicants typically need representation in Brazil through a locally appointed attorney/agent to receive notifications and act before INPI according to Article 217 of the IP Law. Timelines vary materially by technology, and total costs depend on claim count, office actions, annuities and translation/representation expenses; INPI’s schedule of official fees is periodi- cally updated. The average elapsed time from exami- nation request to the examiner’s decision is between two and three years (which may vary considerably). Brazil has many Patent Prosecution Highway (PPH) agreements and fast-track options related to patent prosecution, which can considerably reduce the time to the decision. 1.3 Scope, Term and Maintenance of Patent Rights A granted patent confers the right to prevent third par- ties, without consent, from producing, using, offering for sale, selling or importing a product covered by the patent, as well as using a patented process and sell- ing/using/importing a product obtained directly by a patented process. Scope of protection is defined by the claims, interpreted considering the specification and drawings. The standard term is 20 years from filing for patents of invention and 15 years from filing for utility models. Annual fees (annuities) apply, and non-payment can lead to shelving/termination, subject to restoration within statutory strict deadlines. Following the 2021
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