BRAZIL Law and Practice Contributed by: Gabriel F Leonardos, Claudio Barbosa and Viviane de Medeiros Trojan, Kasznar Leonardos Intellectual Property
• between the publication of the application and the end of the examination by the Patent Examiner (Article 31, LPI); • within a period of 60 days after publication of any administrative appeal filed by the appli- cant from a first instance decision by the Pat- ent Examiner (Article 231, LPI); and • in an administrative nullity proceeding, to be filed within six months counted from the grant of the patent (Article 51, LPI). 1.8 Remedies Against Refusal to Grant an Intellectual Property Right Under Article 212 of the LPI, BRPTO decisions can be challenged through an administrative appeal. If a patent application is rejected, the applicant can appeal to the BRPTO president within 60 days of the decision’s publication. If unsuccessful, the applicant may challenge the final decision in federal court. Additionally, any public administration decision, including those by the BRPTO, can be contested in court within five years (Article 1, Decree No 20,910/1932 and Article 54, LPI). A lawsuit can be filed even while the administrative appeal is pending. 1.9 Consequences of Failure to Pay Annual Fees Under Article 84 of the LPI, applicants and pat- ent owners must pay annual fees starting from the third year after the filing date. Fees are due within the first three months of each year, with a six-month grace period available upon payment of an additional fee. Failure to pay the annual fee results in the extinc- tion of the application or patent (Article 86, LPI). The BRPTO must notify the applicant or patent owner in advance.
To remedy this, the application or patent can be restored within three months of the lapse notice by paying a restoration fee (approximately USD71) and any outstanding fees. If not paid, the application is considered invalid. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights After being granted, the patentability of one or more claims can be reviewed by the BRPTO. A post-grant review proceeding begins with the filing of a petition within six months after the grant of the patent. It can be instituted ex offi- cio by the BRPTO or requested by a third party (Article 51, LPI). The BRPTO will issue a new opinion regarding the patentability of the pat- ent and will notify the patentee and the appli- cant to reply within a joint 60-day term (Article 53, LPI). Then the review will be decided by the president of the BRPTO, finishing the adminis- trative instance (Article 54, LPI). The patent does not have its effects suspended during the pro- ceedings, meaning that the rights derived from the patent are enforceable while the post-grant review procedure is pending. In a post-grant review, a patent can be voided on the following grounds: • the absence of any of the statutory require- ments; • the insufficiency of the written description; • unsupported claims; • the extent of the scope of the application as originally filed; and • the absence of any of the essential formalities for issuance were omitted during prosecution.
56
CHAMBERS.COM
Powered by FlippingBook