Practical aspects of the prosecution of IP

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Luiza Tângari Coelho^[1]
Fialho Salles Advogados, São Paulo
luiza.tangari@fialhosalles.com.br

Introduction

The Covid-19 pandemic has had a great impact not only on public health and the economy, but also in the context of the prosecution of intellectual property rights. The operation of several intellectual property offices has been affected, delaying and sometimes even interrupting prosecution proceedings. Intellectual property rights holders have had their rights affected in favour of the public interest (especially in the context of compulsory licensing of Covid-19-related technologies).

In view of the present situation, Brazil’s Industrial Property Office (INPI) has adopted measures to minimise the impact of Covid-19 on its staff and on rights holders, as well as to foster innovation and the development of technologies which may help the country and the world get through this unprecedented time.

Measures adopted by INPI include the closing of their buildings to the public and suspension of face-to-face services; the implementation of remote working options for staff; and the suspension of time limits applicable to administrative and judicial proceedings. INPI has also adopted measures to encourage the production and licensing of technologies related to Covid-19, including the creation of a technology observatory and the implementation of a fast-track programme for the examination of patent applications related to Covid-19.

Ongoing operation of INPI

INPI’s services have not been interrupted during the Covid-19 outbreak. This was possible because of the availability of online platforms, which enable users to interact with INPI, as well as present petitions and continue with their procedural responsibilities.

For the past several years, INPI has accepted online applications, petitions and other requests regarding administrative proceedings on trademarks; patents; industrial designs; software; integrated circuits; geographical indications; technology transfer; and franchise agreements.

Payments to INPI are made using a special form called ‘Guia de Recolhimento da União (GRU)’, which can be downloaded from INPI’s website.^[2] Payment online is possible, as long as the interested party has an account in a Brazilian bank. Companies or persons domiciled abroad (which do not usually have a Brazilian bank account) are advised to request the assistance of their attorneys in Brazil with any payments due. It is worth mentioning that the establishment and maintenance of a duly qualified attorney in Brazil is a legal requirement to apply and maintain IP registrations in Brazil.

Suspension of face-to-face services

Even though INPI is still operational, precautions have been taken to safeguard the health of its staff and the public. INPI's physical offices have been closed since 16 March 2020 and its staff is working from home at least until 15 June 2020 (the final date is yet to be decided).

Proceedings carried out before INPI only involve hearings or face-to-face communication in exceptional circumstances. In any case, during the suspension of face-to-face services, rights holders and interested parties are instructed to use strictly online mechanisms for communications with the office (especially the ‘Contact us’ feature on INPI’s website).

Suspension of time limits

Aware of the difficulties rights holders and users may face as a result of the Covid-19 outbreak, INPI suspended administrative time limits from 16 March 2020 to 31 May 2020. The suspension was applicable to all proceedings before INPI, regardless of their nature.

Suspended time limits were resumed on 1 June 2020 for the respective remaining period. As an example, if an act was originally to be performed on 20 March 2020 (five days after the beginning of the suspension), the new deadline would be 5 June 2020 (five days after the end of the suspension).

As INPI remained operational during the suspension, users were encouraged to continue to work to existing deadlines, if possible. The aim of the suspension, therefore, was to be a safety net, where the normal course of business was not possible.

Prioritisation of patent applications related to Covid-19 treatments

In order to encourage the development of technologies related to Covid-19, INPI implemented specific fast-track proceedings for patent applications of health products, materials, processes and equipment relevant to the diagnosis, prevention and treatment of Covid-19. This fast track option is granted upon requirement by the applicant and will remain available until 30 June 2021.

It is worth mentioning that the patent application does not need to cover (specifically and/or explicitly) the diagnosis, prevention or treatment of Covid-19. Nevertheless, in order to be eligible for priority the applicant must explain, as a fast-track requirement, the possible connection of the application’s subject-matter to the efforts against Covid-19.

Creation of the Technology Observatory

Finally, INPI has also created the Observatory of Technologies Related to Covid-19.^[3]  This is a section of INPI’s website which provides information about technologies that may be useful for global and local actions against Covid-19.

The Observatory has already made several updates and reports available on recent technological developments in the field of Covid-19, as well as developed and published studies including pending and granted patents on mechanical ventilators. It also provides information about financing and grant opportunities for research and development in the field of Covid-19.

Conclusion

Covid-19 has certainly changed the ways that people interact and business is carried out. This challenges the activities of intellectual property offices. Nevertheless, when it comes to Brazil it is fair to say that INPI has been successful in striking a balance between remaining fully operational and preserving staff health and holders’ rights, in an unusual and difficult time.