Recent News from the Brazilian Institute of Intellectual Property (INPI)

In the past two weeks the Brazilian Institute of Intellectual Property (INPI) has been very active with updates relevant to patent examination, as follows:

Invitation for Public Comments on the General guidelines:
On March 16, 2015, INPI published an invitation for public comments on the draft of Part II (“Bloco II”) of general Examination Guidelines. Part II deals with Patentability requirements, covering subject matters not considered to be inventions, non-patentable inventions, industrial applicability, state of art, novelty, inventive step as well as Markush-type claims and composition claims.

Anyone interested in submitting public comments has 60 days to present an opinion by using the appropriate formulary. Therefore, the deadline for comments is May 14, 2015. The Portuguese version of Part II is available for download here.

Part I (“Bloco I”) of the Examination Guidelines covering the specifications regarding title, specifications, claims, drawings and abstract was published in July 2012 for public comments. Part I was later put into force by Resolution 124/2013, from April 12, 2013. The Portuguese version of Part I is available for download here.

Guidelines on Biotechnology:
In November 2012 the INPI has published a draft of the Examination Guidelines of Patent Applications in the Biotechnology Arts for public comments. On March 17, 2015, the BRPTO published the final version of the Examination Guidelines.

The guidelines provides for the patentability requirements for biotech patents, including reach-through claims, non-patentable subject matter, the patentability of micro-organisms and others. Also, it has definitions about biologic sequences, oligonucleotides, promoters, vectors, cDNAs, RNAs, ESTs, ORFs, proteins, protein fragments, fusion proteins and antibodies, among others.
It provides further for issues regarding stem cells and patent applications claiming material of the Brazilian genetic heritage.

The new guidelines are valid as of March 17, 2015. Its Portuguese version is available for download here.

Extension of the deadline for Green Patent Requirements:
By the Resolution No. 145/2015 the (Resolução nº 145/2015), that was published on March 24th, INPI has decided to extend the term of Phase 3 of its Green Patent Program. Phase 3, originally intended to end on April 16, 2015 was extended for one additional year and shall be in force until April 16, 2016.

The requirements to be accepted in the program are:
• the patent or utility model application must have up to 15 claims of which (for patent applications) up to three may be independent claims;
• there must be a Brazilian application, a PCT application in the Brazilian national phase or a Brazilian application filed under the Paris Convention;
• the application’s subject matter has to be one of the technologies listed in Resolution No. 131/2014, (here);
• the application must not have been subject to any other preferential examination tracks.

Phase 3 is limited to the first 500 cases received by INPI and as per data updated until March 24, 2015, only 110 have been received so far. 26 applications have been already granted during Phase 3 (before Phase 3, 19 patents have been granted under the program).

Post written by Roberto Carapeto.