BRAZILIAN PATENT SYSTEM SEMINAR Brazilian patent litigation and practical business. Marc Hargen Ehlers January 31, 2012

Transcription

1 BRAZILIAN PATENT SYSTEM SEMINAR Brazilian patent litigation and practical business Marc Hargen Ehlers January 31, 2012 dannemann.com.br Dannemann Dannemann Siemsen. Siemsen. All rights All rigths reserved. reserved. 1

2 Topics Introducing processes after examination Divisional application Appeal against rejection of patent application Administrative nullity action Enforcement The Court System in Brazil State Courts Federal Courts Brief Analysis of Two Concrete Cases Litigation Statistics dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 2

3 Introducing processes after examination Outline NO EXTENSIONS Rejection Maintained or Allowed Office Actions might be issued and must be responded within 60 days NO EXTENSIONS dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 3

4 Introducing processes after examination Divisional Application Rejection Maintained or Allowed Possible to file divisional application(s) dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 4

5 Introducing processes after examination Divisional Application Filing possible divisional application(s) Divisional applications may be filed in Brazil until the end of examination. The end of examination is deemed to be the date of the conclusive technical opinion regarding patentability or the thirtieth day prior to the publication of the corresponding decision, whichever occurs last. Since it cannot be foreseen when technical examination will be actually concluded, the suggestion is to file any possible divisional together with (or soon after) the reply of a written opinion. If the application is directly allowed it will not be possible to file corresponding divisional application(s). Furthermore, we must draw your attention to the fact that the filing of divisional applications after the end of examination (appeal stage) are usually objected by the Brazilian PTO(INPI). dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 5

6 Introducing processes after examination Divisional Application Filing possible divisional application(s) According to the interpretation of the INPI regarding the filing of divisional applications, it would be necessary to be excluded from the scope of protection of the original application claimed subject matter and file it in the divisional application. We do not share such position since we understand that the claimed subject matter of the divisional application need only to be contained in the original application and not necessarily be claimed. dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 6

7 Introducing processes after examination Appeal against Examiner s decision Rejection Maintained or Allowed FILING AN APPEAL REPLY TO OFFICE ACTIONS Amendments: According to INPI regulations it is only possible to restrict the scope of protection and new category of claims cannot be added dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 7

8 Introducing processes after examination Appeal against Examiner s decision Rejection Maintained or Allowed dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 8

9 Introducing processes after examination Appeal against Examiner s decision Rejection Maintained or Allowed dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 9

10 Introducing processes after examination After allowance applicant must pay a final fee and the patent is granted dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 10

11 Introducing processes after examination Administrative Nullity Action 60 days NO EXTENSIONS 60 days NO EXTENSIONS Remark: The INPI can declare a partial nullity of the patent. It is necessary to combine claims. dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 11

12 Introducing processes after examination Rejection Mantained or or Allowed Rejection Maintained Patent Maintained APPEAL 5 years Brazilian Federal Court Ends the administrative (INPI s instance) proceedings of the case and, therefore, the only route available now further to contest this final rejection/maintenance decision is before the Brazilian Federal Court by filing a civil action against such decision. Although the deadline for going to the Court is five years counted from the publication of the decision, we recommend to take the initial steps right after such decision. dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 12

13 Enforcement dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 13

14 dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 14

15 Criminal and/or civil remedies available dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 15

16 Patent infringement action: A typical procedure Possible technical report(s) Remark: the nullity of the patent can be argued as defense (effects are interparties ) dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 16

17 The Court System in Brazil dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 17

18 The Court System in Brazil State and Federal Law Suits can be Appealed before the Superior Courts dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 18

19 State Courts dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 19

20 Federal Courts dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 20

21 Case 1) IP utilization in Brazil dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 21

22 Case 2) IP utilization in Brazil an dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 22

23 Case 2) IP utilization in Brazil dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 23

24 Litigation Statistics in Brazil* Trademark Total per year Plaintiff Defendant Total 261 National Foreign Industrial design Total per year Plaintiff Defendant Total 9 National 9 7 Foreign 0 2 Patent Total per year Plaintiff Defendant Total 173 National Foreign *Remark: This data involves only our firm s litigation (please note that our firm handles probably more than 40% of the patent litigations in Brazil). dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 24

25 Obrigado! Thank you! ありがとうございます! Marc Hargen Ehlers January 31, 2012 dannemann.com.br Dannemann Dannemann Siemsen. Siemsen. All rights All rigths reserved. reserved. 25

26 (Ref) Compulsory license Compulsory license Economical abuse by the patentee No exploitation of the patented subject matter in Brazil Commercialization does not meet the necessities of the market In cases of national emergency or public interest On Nov/96 a law estalished that the Brazilian Public Healthcare System should provide antiretroviral medicaments. dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 26

27 (Ref) Compulsory license On Aug/01 the former Health Minister (José Serra) anounced the compulsory license of the patent of Nelfinavir (Roche); On the very same day Roche anounced that would reduce the corresponding price on 40% dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 27

28 (Ref) Compulsory license On Jun/05, the former President, Luiz Inácio Lula da Silva (Lula) and the Minister Humberto Costa, signed a decret stating that the medicine Kaletra (Abbott) was of public interest. Thereafter despite of negotiations the patent of Kaletra had its compulsory license declared by the Brazilian Goverment. dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 28

29 (Ref) Technology licensing Patent and Know How Agreements Since Industrial Property Law no /96 does not deal effectively with unpatented technology, know how is not considered by INPI as a proprietary right. INPI understands unpatented technology as not proper matter for licensing. It considers that transfer of know how is a sale and an acquisition whereby, after termination of the agreement, the recipient can continue to use the technology. Clauses stipulating return of know how or prohibiting further use of the technology after expiration of the agreement are not accepted. INPI accepts confidentiality obligations related to know how to survival for a maximum period of 5 years after termination or expiration of the agreement. dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 29

30 (Ref) Technology licensing Patent and Know How Agreements INPI only records technology transfer agreements for 5 years, exceptionally extendable for a further five years provided, the technology was not completely transferred or the agreement is essential for the competitiveness of recipient. The maximum term for tax deductibility purposes is also 10 years. Royalties must be within the price commonly practiced in the relevant technical field, considering both national and international markets. Royalties may be based on a percentage of net sales or a fixed amount based on each unit produced. Royalties involving related companies are limited by the corresponding ceiling of fiscal deductibility specified by Regulation no. 436/58 and vary between 1% to 5% of the net sales price depending on the field of technology involved. INPI considers that imported products and components should not be included in the net sales price for the calculation of royalties. dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 30

31 (Ref)Examination on medicines (ANVISA) WRITTEN OPINION 90 days REPLY ALLOWANCE REJECTION APPEAL 60 days ANVISA FINAL REJECTION WRITTEN OPINION REPLY 60 days GRANTED PATENT FINAL REJECTION dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 31

32 (Ref.)Industrial designs Total term of 25 years Industrial Designs for Must Mach Parts and the CADE (Economic Defence Administrative Counsel) dannemann.com.br 2012 Dannemann Siemsen. All rigths reserved. 32