In the age of smartphones, internet of things and cloud computing, it is no longer possible to imagine large parts of technology without software. Accordingly, many of the current innovations are made in the field of digital data processing and may have a minimum of one feature that is implemented using – at least partially – a computer program.

However, under the Brazilian Industrial Property Law (Federal Law 9,279/96), computer programs for data processing units as such are expressly excluded from patent protection. Thus, the fact that a data processing unit is controlled via a program to achieve a certain result is not sufficient for the program to be patented in Brazil.

On the other hand, patents for computer-implemented inventions are still allowed. Different from the protection of the software per se, a computer-implemented invention involves the use of a computer or other programmable apparatus, where one or more features are processed wholly or partly by means of a computer program.

On December 29^th, 2020, the Brazilian Patent and Trademark Office (INPI) published an updated version of the Guidelines for Examination of Patent Applications Involving Computer Program-Implemented Inventions. This updated version has been in force since January 1^st, 2021.[1]

The publication updates the former Guidelines and, among other matters, better define the scope of some terms such as “algorithm”, “computer programs”, “set of instructions” and “expression of a set of instructions”.

Another well received addition to the Guidelines relates to protection of datasets, a relevant feature in connection with Artificial Intelligence related inventions. Although the Guidelines establish that data structures per se are not considered an invention, it is outlined that a creation that uses or generates data structures may be considered an invention.

Some highlights from the new Guidelines also include detailed explanations about the non-patentable creations which comprise mathematical methods; business, accounting, financial, education, publicity, lottery, and supervision or auditing methods; diagnostic or therapeutic methods applied directly to a body; and the presentation of information, in the case when such techniques are implemented by a computer. The Guidelines also foresee exceptions to each of the existing prohibitions (hypotheses where a patentable invention would not be recognized), appointing that the restrictions are not absolute and can be circumvented under certain circumstances.

[1] Available at: < https://www.gov.br/inpi/pt-br/servicos/patentes/pagina_consultas-publicas/arquivos/2020_11_16___diretrizes_iic___versao_final.pdf >. Checked on September 30^th, 2021.

Patent Backlog

For many years, the INPI (Brazilian Patent and Trademark Office) faced a huge backlog of pending patent applications. Until few years ago, a patent application took at least 11 years to be granted, on average; and, depending on the technical field, the granting decision could take even longer.

Over the past 10 years Brazil has adopted several measures to remedy the situation, and, by the end of 2021, INPI estimates that 80% of the pending patent applications related to the backlog will be decided. Thus, by the end of 2021 the total time for completing the technical examination of a patent application is estimated to be reduced to 4 years from its filing date.[1]

Patent examination requires a complex approach, and, as examples, in England[2] a patent usually takes 5 years to be granted, while in Canada[3] it takes almost 7 years.

 The End of ANVISA´s Approval in Pharmaceutical Products Patent Applications

Federal Law 14,195/2021 entered into force on August 27^th, 2021, and, among other provisions, revoked Art. 229-C of the Brazilian Industrial Property Law (Federal Law 9,279/96), based on which the granting of pharmaceutical patents was subject to the prior approval of the National Health Surveillance Agency´s (ANVISA)  (for further information see here).

New Compulsory Licensing Rules for Patents

On September 2^nd, 2021, Bill no. 12/21 was sanctioned in Brazil, aiming at amending the provisions dealing with compulsory licenses set forth by the Brazilian Industrial Property Law (Federal Law 9,279/96) in cases of national or international emergency, as well as in case of public interest or recognition of public calamity.

The major differences from what was already provided by the Brazilian Industrial Property Law are those listed below:

• patent applications are also subject to compulsory license;
• the royalties are fixed as 1.5% of the net selling price of the product associated with the patent until its value is effectively established;
• Two-step compulsory licensing procedure: 1- the Brazilian Executive Power must publish, within 30 days of the state of emergency declaration date, a list of patents or patent applications related to essential products and processes that would help to counter such situation; and 2- After the publication of said list, the Executive Power will have a 30-day term, renewable for the same period, to analyze the inventions and utility models covered by the listed patents and patent applications. Compulsory licenses would then be granted, ex officio, for a specific period and on a non-exclusive basis.

(for further information, see here)

The End of the Minimum Patent Term

The Brazilian Supreme Court has concluded its judgment on article 40 of the Brazilian Industrial Property Law (Federal Law 9,279/1996), thus declaring on May 6^th, 2021 such provision was unconstitutional.

Pursuant to such decision, the INPI, upon granting of a patent, shall no longer apply the validity term extension, so that the concession privilege shall be limited to the validity terms provided by the heading of article 40, they are: 20 years counted from the filing date for patents of invention and 15 years for patents of utility model. The ruling had immediate effects and applies to all and any category of invention, embodying both the already filed applications awaiting analysis and new applications (for further information, see here).

[1] Available at: https://www.gov.br/pt-br/propriedade-intelectual/planos-estrategicos/plano-de-acao-inpi-2021-1.pdf/view; Checked on September 30, 2021.

[2] Available at: <https://www.gov.uk/patent-your-invention/before-you-apply>. Checked on September 30, 2021.

[3] Available at: < https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02462.html>. Checked on September 30, 2021.