BILL 10,920/2018 – PATENT APPLICATIONS AND TRADEMARKS

The House of Representatives (Câmara dos Deputados) in Brazil approved on June 29, 21 Bill no. 10,920/2018, proposed by congressmen Paulo Abi-Ackel (PSDB-MG) and Julio Lopes (PP-RJ). The purpose of the Bill has been enlarged throughout discussions in the floor of the House of Representatives and now aims at amending the Industrial Property Act (Federal Law no. 9,279/1996) to create a new provisional system and change some filing and examination procedures vis-à-vis patent applications, and to exclude requirements against international agreements adhered to by Brazil. The proposal now moves to the analysis and vote in the Senate.

Among others, the main changes in the Industrial Property Act encompassed by the Bill as passed through the House of Representatives are:

Foreign Attorney

Current Article 217 establishes that the person domiciled abroad must appoint and retain an attorney-in-fact who is duly qualified and domiciled in Brazil, and with powers to represent that person in administrative and judicial proceedings, including receipt of summons and service of process.

The Bill proposes a harmonization of such rule in cases of international treaties, such as the Madrid Protocol for the filing of trademarks. Accordingly, tackling both the need of harmonization but also the avoidance of unequal treatment to national and foreign applicants (the lack of a local attorney-in-fact would lead to difficulties by Brazilian litigants to file claims against such foreign applicants) a new paragraph would be included into Article 217 establishing a special rule where the foreign applicants will be exempt from the requirement, provided that if there is a lawsuit, the Judiciary shall notify the Brazilian National Institute of Industrial Property (BPTO), which will then notify the applicant through the World Intellectual Property Organization to present the power of attorney appointing such local attorney-in-fact within a 60-days term.

Simple translation

According to the Bill patent applications must be submitted in Portuguese and any other foreign language documents submitted along with the application may be in foreign language, being required only their simple translation, submitted at the time of filing the application or within sixty days thereafter.

This will apply to the specification, claims, abstract and drawings (if applicable).

Provisional Application

A new provisional application for patents will be created, which may help inventors gain time to perform research, proofs, and prototypes to improve their invention before submitting the definitive application to Brazilian National Industrial Property Institute (BPTO).

The BPTO must through regulations establish the conditions of the provisional application, which must comprise a clear and sufficient description of the invention and cannot claim priority from previous applications.

Within 12 months, the provisional application shall be converted into a definitive patent application. After such term, if the inventor does not apply for the conversion, the application will be withdrawn.

The conversion into a definitive application may not result in a patent application whose subject matter exceeds the provisional application and, the patent term, if the application is thus granted, will be counted from the date of the provisional filing.