Brazilian Patent Substantive Examination

Transcription

1 INSTITUTO NACIONAL DA PROPRIEDADE INPIINDUSTRIAL Brazilian Patent Substantive Examination Diego B. Musskopf Patent Examiner - Human Needs NOTE 1: This presentation is a compilation of INPI institutional presentations in Portuguese Language and it was translated by the author. Some matters was added and some drawings were done by the author aiming at best clarify the topics. When any ambiguity of interpretations is fond, the Portuguese text and the INPI understanding shall prevail. NOTE 2: The INPI may update its NA and Guidelines, please be award to use the last version.

2 Introduction The patent system is based on an "exchange": INDUSTRY: Industrial scientific development GOVERNMENT: Protects the invention for a certain period of time 1

3 A Application: Table of Contents Documentation Type of Application Sufficiency of Disclosure Unity of Invention Clear and Accurate Claims Amendments B Patentability: Not Considered an Invention nor Utility Model Not Patentable Invention Industrial Applicability Novelty Inventive Activity / Act 2

4 Overview of Legal Patent Information Brazilian Constitution TRIPs Br IPLaw 9279/96 Normative Act 127 and 128 Guidelines The law shall protect inventions and authors What and how long General definitions General outline Documents required How to apply Content of documents How to examine Examination workflow 3

5 INSTITUTO NACIONAL DA PROPRIEDADE INPIINDUSTRIAL Workflow Click to edit Master subtitle style 4

6 Workflow Overview 5 File date Publication Grant Decision Patent Nullification process Decision Examination Request Decision Refusal Decision Appeal 18 months Until 36 months 3rd party information Registration Fee Examination Period Technical reports Written opinion Annual Fee

7 Overview Examination Period : Examination Workflow Examination Request (IP Law Art. 33) Prior Art Report and Technical Report (IP Law Art. 35) 1st EXAMINATION 6.1 REQUEST FOR AMENDMENT 7.1 OPINION FOR NON-PATENTABILITY DEFINITIVIILY DISMISS no ANSWERED IN 90 DAYS? yes ANSWERED IN 90 DAYS? no yes 2nd EXAMINATION 2nd EXAMINATION GRANT DECISION 9.2 REFUSAL DECISION 6

8 SUBSTANTIVE FORMAL REVIEW EXAMINATION REQUEST art. 33: until 36 months after file art. 31: wait 60 days for examination YES DOCUMENTATION INFORMATIVE UNDERSTANDING THE INVENTION READ 3th PARTY INFORMATION PRIOR-ART RESEARCH YES COMPOSITION WRITTING YES art.37: GRANT DECISION no Missing documents art.35: DISMISS Family dossier (art. 34, I) Regularizinged docs (art. 34, II) Priority translation (art. 34, III) Descreptive sufficiency (art. 24) Forbiden matters (art. 10, 18) Industrial Applicability (art. 15) Amendments (art. 32) Unity of invention (art. 22) Prior art date (art. 11, 12, 16, 17) Kind of application (8, 9) Unity of invention (art. 22) Novelty (art. 11) Inventive step / act (art. 13, 14) Topics related to the NA127/98 60d 60d no EXPEDITION FEE PAYED? desarchive REQUESTED? yes no Art.36 1: DEFINITILY DISMISS SEND RESPONSABLE DIVISION art.33: DISMISS DEMAND DOC art.37: decision of REFUSAL Art.36: Op. nonpatentability art.36 1: defin DISMISS art.36: Request AMENDMENT no no 90d no no 90d no 60d document ATTACHED? yes reason OVERCOME? yes art.36 2: ANSWER? amendment ACEPTABLE? yes art.36: ANSWER? OBS: THIS IS AN EXAMPLE AND NOT A OFFICIAL INPI WORK-FLOW. y y 8

9 PATENT REFUSED 60d art.212: TRIAL REQUEST 60d art.213: 3th PARTY INFORMATION TRIAL BOARD EXAMINATION Art.215: The trial decision is the last one insite the INPI. Descreptive sufficiency (art. 24) Forbiden matters (art. 10, 18) Industrial Applicability (art. 15) Amendments (art. 32) Unity of invention (art. 22) Prior art date (art. 11, 12, 16, 17) Kind of application (8, 9) Novelty (art. 11) Inventive step / act (art. 13, 14) Topics related to the AN127/98 COURT APPEAL no REFUSAL DECISION art.36 1: defin DISMISS art. 214: Request for AMENDMENT 60d 60d GRANT DECISION Art.212 3º: INPI COMISSIONER DECISION art. 214: Opinion for NON- PATENTABILITY no no no no yes IS THE FINAL BOARD DECISION? REASON OVERCOME? yes art.36 2: ANSWER? AMENDMENT ACEPTABLE? yes art.36: ANSWER? y y OBS: THIS IS AN EXAMPLE AND NOT A OFFICIAL INPI WORK-FLOW. 9

10 A Application: Table of Contents Documentation Type of Application Sufficiency of Disclosure Unity of Invention Clear and Accurate Claims Amendments B Patentability: Not Considered an Invention nor Utility Model Not Patentable Invention Industrial Applicability Novelty Inventive Activity / Act 10

11 INSTITUTO NACIONAL DA PROPRIEDADE INPIINDUSTRIAL Application: Click to edit Master subtitle style Documentation Type of Application Sufficiency of Disclosure Unity of Invention Clear and Accurate Claims Amendments 11

12 Art. 3 (and others) Documents to file: Documents 12

13 Type of Application INVENTION is the result of the ability of man's creation that produces a new technical effect in a particular field of technology. (EXAMINATION) UTILITY MODEL is an object, its form or structure (or the combination of these), which results in functional improvement. (EXAMINATION) INDUSTRIAL DESIGN is any new product design form, which is characterized by new ornamental configuration. (REGISTRATION) 13

14 Art. 8 INVENTION: Type of Application novelty, inventive activity and Industrial Applicability Art. 9 - UTILITY MODEL: A useful object (or part thereof) with an improvement to its use or manufacture; A new shape or arrangement, inventive act and Industrial Applicability Functional Improvement is considered to be the introduction of an object in shape or arrangement that leads to increased comfort, convenience or efficiency in terms of use and/or manufacturing. 14

15 Type of Application INVENTION Heating System Temperature Control System UTILITY MODEL Ergonomics of the Cable Support Mechanism of Iron CERTIFICATE OF ADDITION (any time) Device to avoid burning the shirt s buttons; 15

16 Type of Application Art CERTIFICATE OF ADDITION: Protect an improvement or development introduced in one invention, Same inventive concept to the main invention; Novelty and Industrial Applicability only; Certificate of Addition can be converted to a patent: Art. 76 By the applicant: Within the period for appeal Art. 77 By the patentee: Within the nullity process In both cases, the patent examiner will verify if the new patent can subsist. 16

17 Interchangeable Application Types Utility Model Patent of Invention JP Convertable BR Convertable Certificate of Addition (Appeal period / process of nullification) Industrial Design 17

18 Monopoly Period Priority D-1 year File Date Publication D+1,5 years Examination Request D+3 years D+10 years D+15 years D+20 years D+25 years Timeline Patent of Invention Grant + 10Y Certificate of addition BR - Utility Model Patent Grant + 7Y JP- Utility Model Registration Industrial Design Registration Brazil Japan Exception 18

19 Specifications and Best Mode Art. 24. The specifications: must clearly and accurately describe the invention enable its realization by a person skilled in the art indicate the best mode when it is applicable. Specifications and definitions are described in the Normative Act 127: INVENTION: Item (from A to L ); UTILITY MODEL: (from A to J ) item J point out the best mode on the filing date when the nature of the invention comprise more than one form of execution. 20

20 Amendments Art 32. Applicants may amend the application: 1. until the examination request in order to better clarify or define the application; 2. without going beyond what was initially revealed; 3. Art. 36. in order to answer official reports; NOTE : This topic is under standardization (INPI/PROC/CJCONS/ nº 012/2008) 21

21 Amendments Temporal limitation: 22 Grant Decision Patent File date Publication Examination Request Appeal 18 months Registration Fee Nullification process Decision Decision Refusal Decision Until 36 months Examination Period Technical reports Written opinion 3rd party information Before Ex. Request After examination Request

22 Divisional Applications Art. 26. The patent application can be divided: ex officio; By applicant request; As an answer to a official report (art. 35) Until the end of the examination; the application that contains only a single invention or utility model may not be divided if the division entails mutilation or double protection (NA 127/97. item 6.1.1). The divisional application must: make specific reference to the original application, and not go beyond the subject matter disclosed in the original application 23

23 use clauses in claims NA127/ _k. explanatory clauses regarding the operation, advantages, and the simple use of the object are not accepted on claims: Ex.: Device to inject fluid (description) used to oil refill. Clause not allowed Note: medicinal divisions accept use in claims: Ex.: use of the compound with the formula X to treat headaches. Clause Allowed The second use is evaluated according to the usual patentability criteria and requirements; 25

24 A Application: Table of Contents Documentation Type of Application Sufficiency of Disclosure Unity of Invention Clear and Accurate Claims Amendments B Patentability: Not Considered an Invention nor Utility Model Not Patentable Invention Industrial Applicability Novelty Inventive Activity / Act 26

25 INSTITUTO NACIONAL DA PROPRIEDADE INPIINDUSTRIAL Matters Excluded Click to edit Master subtitle style Not considered an invention nor utility model; Not a patentable invention 27

26 Matters not considered inventions Article 10 - The following are not considered to be inventions or utility models: I. Discoveries IX. natural living beings, in whole or in part, and biological material, including the genome or germ plasma of any natural living being, when found in nature or isolated therefore, and natural biological processes; 28

27 DISCOVERY Arctium Lappa (Carrapicho) x INVENTION VELCRO 29

28 DNA, plants, animals, the pollination process, extracts of animals / plants Extraction process, composition containing the extract; Synthetic compounds indistinguishable from naturally occurring 31

29 Matters not considered inventions Article 10 - The following are not considered to be inventions or utility models: I. scientific theories and mathematical methods; II. purely abstract concepts; III. schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature; 32

30 Matters not considered inventions Article 10 - The following are not considered to be inventions or utility models: IV. literary, architectural, artistic and scientific works or any aesthetic creation; V. computer software per se; Other Laws VI. the presentation of information; VII. Game rules; 33

31 Matters not considered inventions Article 10 - The following are not considered to be inventions or utility models: VIII - operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body; 34

32 Not Patentable Invention Article 18 - The following are not patentable: I. that which is contrary to morals, good customs and public security, order and health; Interpretation subjective and changeable, since these concepts are related to the customs and social values. 35

33 Not Patentable Invention Article 18 - The following are not patentable: II. substances, matter, mixtures, elements or products of any kind, as well as the modification of their physicalchemical properties and the respective processes of obtaining or modifying them, (ANYTHING) when they result from the transformation of the atomic nucleus; 36

34 Not Patentable Invention Article 18 - The following are not patentable: III. living beings, in whole or in part, except transgenic micro-organisms meeting the three patentability requirements - novelty, inventive activity and Industrial Applicability provided for in article 8 and which are not mere discoveries; For the purposes of this law, transgenic micro-organisms are organisms, except the whole or part of plants or animals, that exhibit, due to direct human intervention in their genetic composition, a characteristic that can not normally be attained by the species under natural conditions. 37

35 INSTITUTO NACIONAL DA PROPRIEDADE INPIINDUSTRIAL Patentability Click to edit Master subtitle style Industrial Applicability Novelty Inventive Activity / Act 38

36 Well known Prior Art A Example 1 Application 1 Water sink A Water sink A Pump B Coffee C Coffee C Pump B 39

37 Is there... Any missing or necessary document? Family dossier (art. 34, I) Regularizinged docs (art. 34, II) Priority translation (art. 34, III) Lack of Descreptive sufficiency (art. 24)? Any Forbidden matters (art. 10, 18)? Any Amendments (art. 32)? Unity of invention (art. 22)? Kind of application (8, 9)? First Questions 40

38 Is there Industrial Applicability? Industrial Applicability Article 15 - Inventions and utility models are considered to be susceptible to Industrial Applicability when they can be made or used in any kind of industry. Industrial Applicability The concept of Industrial Applicability should be analyzed with the necessary flexibility as to its meaning. It should also be applicable to agricultural and extractive industries and to all manufactured or natural goods. 41

39 Well known Prior Art A Example 1 Application 1 Water sink A Water sink A Pump B Coffee C Coffee C Pump B 42

40 Novelty Article 11 - Inventions and utility models are considered to be new when not included in the state of the art. 1 - The state of the art comprises everything made accessible to the public before the date of filing of a patent application, by written or oral disclosure, by use or any other means, in Brazil or abroad Exceptions: Domestic Priority (1 year) Unionist Priority (1 year) Grace Period (1 year) 43

41 Novelty - State of the Art D-1,5 years Author s Application Publication D-1 year D-6 month D-1 day File Date Domestic Prior-Art Publishing Timeline Author s Domestic Application Family Application (CUP Priority) Domestic Priority Author s Exibition (Grace Period) ANY Published Application (except domestic) Brazil Japan Exception ANY Domestic Application (except same author) 44

42 Novelty Is there Novelty? Features well known Prior Art A Prior Art B Water Sink Water Pump X X Lack of Novelty? Coffee Dispenser The invention main at avoid dripping X Is there a new question or problem solution? Why change order? Simple Change? 46

43 well known Prior Art A Water sink A Features Features Example 1 Application 1 Water sink A Pump B A A Coffee C Coffee C B C Pump B C B Is this an unespected effect? Avoid dripping 47

44 Application 1 Water sink A Prior-Art B Water sink A Features A C B Novelty Coffee C Coffee C A C B D Pump B Pump B Avoid Dripping Valve D Optional 48

45 Novelty Is there Novelty? Features Application 1 Prior Art B Water Sink X X Water Pump X X Coffee Dispenser X X Avoid Dripping X X Lack of novelty (Valve not included) X 49

46 well known Prior Art A Example 2 Application 2 Water sink A Water sink A Pump B Coffee C F1 Coffee C pump B F2 Valve D 51

47 Example 2 Application 2 Prior art C Prior art D Water sink A Water sink A Water sink A Coffee C Coffee C Pump B F1 pump B Pump B Coffee C Valve D F2 Valve D 52

48 Is there Novelty? yes Is there inventive Activity? Inventive Activity Art An INVENTION shall be taken to involve inventive activity when: it does not derive in an evident or obvious manner from the state of the art for a person skilled in the art. 53

49 Inventive activity - State of the Art D-1,5 years Author s Application Publication D-1 year D-6 month D-1 day File Date Domestic Prior-Art Publishing Time line Autor s Domestic Applic. Family Application (CUP Priority) Domestic Priority Author s Exibition (Grace Period) ANY Published Application (exept Domestic) Brazil Japan Exception ANY Domestic Application (exept same autor) 54

50 Is there Inventive Activity? Inventive Activity Features Prior Art C Prior Art D Water Sink X X Water Pump X X Coffee Dispenser X X Avoid Dripping X Valve X 55

51 Person Skilled in the Art A person skilled in the art holds general knowledge on the matter and should be able to: Conduct tests and experiments Make substitutions using equivalent materials Search for information in libraries, databases, theses, etc. 57

52 Lack of Inventive Activity Situations listed in the Guidelines where there is a lack of inventive activity (non-exhaustive list): Simple choice or exchange of well-known materials; Mere change of form and/or proportion; Simple combination of known matters; NOTE: The INPI is updating its Normative Acts and Guidelines, please be award to use the last version. 58

53 Example 2 Application 2 Features Prior art C Prior art D Water sink A A Water sink A Water sink A Coffee C A C B C Coffee C Pump B pump Pump B B D Pump B Coffee C Valve D Lack of Inventive Step? Problem? Solution?... Valve D 59

54 Inventive activity Situations listed in the Guidelines where there is inventive activity (non-exhaustive list): Data shows the superiority of the invention relative to the prior art; Invention solves a technical problem that has existed for many years; the invention presented a solution contrary to normal activities (in the same technical field) and no one skilled in the art would follow the same path; Product resulting from the invention is a commercial success due to the invention s technical nature (and not because of advertising); 60

55 INSTITUTO NACIONAL DA PROPRIEDADE INPIINDUSTRIAL QUESTION: Click to edit Master subtitle style Can we apply this same invention to a Utility Model? IT DEPENDS! 61

56 Art. 8 INVENTION: Type of Application Novelty, inventive activity and Industrial Applicability Art. 9 - UTILITY MODEL: An useful object (or part of it) with a improvement on its use or manufacture A new shape or arrangement, inventive act and Industrial Applicability Functional improvement is considered to be the introduction of an object in shape or arrangement which leads to increase comfort, convenience or efficiency in terms of use and/or manufacturing. 62

57 Inventive Activity x Inventive Act INVENTION Article 13 - An invention shall be taken to involve inventive activity when, for a person skilled in the art, it does not derive in an evident or obvious manner from the state of the art. UTILITY MODEL Article 14 - A utility model shall be taken to involve an inventive act when, for a person skilled in the art, it does not derive in a common or usual manner from the state of the art. New technical effect Improved usability Inventive act is similar to inventive activity, but with a lower degree of inventiveness. 63

58 Example 3 A person, when using a hair clip, realized that the tips of the clamp hurt. She imagined a simple way to solve the problem: an added protection at the ends of that clip, aiming at increasing the comfort. Prior Art Application 64

59 Questions: Does it have Industrial Applicability? Example 3 Is it an practical-use object? Is it part of an object? About the prior-art research: Does the object present a new shape or arrangement? Is there any other piercing object with fixed protection at the tips in order to prevent it from piercing its user? Other sharp objects to protect the tip were found in the prior art searches, including knives, scissors and fencing swords. However, none of these objects are in the same field. Inventive Act 65

60 Inventive Act An utility model can be evident and obvious to a person skilled in the art, but it cannot be common or usual ; Possible examples when there is inventive acts: Replacement screws for pressure fittings Modification of a telephone form and structure where the transmitter and receiver have been integrated into one piece in order to make its use more practical A combination or set of known elements (kits, premolded, etc.) or arrangement of fibers (in the case of textiles and the like) 66

61 Example 4 Patent Application: Utility model for a PET bottle cap containing: (a) points of weakness, (b) internal threads and (c) a ring attached to the top of the cover for the points of weakness. Prior Art: Bottle cap for liquids that has (a) lines of weakening, (b) internal threads and (c) a ring larger than the bottle cap. Application Prior Art 67

62 Lack of Inventive Act Possible examples of a lack of inventive act are: When a document claims an object having a different arrangement but with the same applicability or usability A small object with common shape changes resulting in an object with the same improvement of known objects from the prior art (such as shape-shifting from round to square) 68

63 INSTITUTO NACIONAL DA PROPRIEDADE INPIINDUSTRIAL Thank you! Domo Arigatou! Diego Boschetti Musskopf Patent Examiner Human Needs NOTE 1: This presentation is a compilation of INPI institutional presentations in Portuguese Language and it was translated by the author. Some matters was added and some drawings were done by the author aiming at best clarify the topics. When any ambiguity of interpretations is fond, the Portuguese text and the INPI understanding shall prevail. NOTE 2: The INPI may update its NA and Guidelines, please be award to use the last version. 69