IP PROTECTION IN LATIN AMERICA BRAZIL Joaquim Eugenio Goulart May 23rd, 2013 Brazil Highlights South America's leading economy and regional leader; Vast natural resources and consumer market; Well-developed agricultural, mining, manufacturing, and service sectors; Political and economical stability. 2011 Dannemann Siemsen. All rights reserved. www.dannemann.com.br 1
Brazil Geography Population 200 million Area 8.6 million km² Main Cities São Paulo Rio de Janeiro Brasilia (Capital) World 5th largest country 2011 Dannemann Siemsen. All rights reserved. www.dannemann.com.br 3 Brazil Economy: Trade Exchange World 7th largest economy in market exchange rate (2012) Exports (US$ Billion) 2012 1) China 41 2) USA 26 3) Argentina 17 4) Netherlands 15 5) Japan 7 6) Germany 7 Imports (US$ Billion) 2012 1) China 34 2) USA 32 3) Argentina 16 4) Germany 14 5) South Korea 9 6) Nigeria 8 Sources: Brazilian Govt/ MDIC / IMF 4 2
Brazil Economy: Exportation Position Product Value % 2012/11 % Share 1 Ores (mining) 33,244-24,8 13,7 2 Oil and Fuel 30,986-0,1 12,8 3 Soy Beans and its products 26,122 8,2 10,8 4 Transport material 24,594-2,1 10,1 5 Metallurgic Products 15,556-10,51 6,3 6 Chemicals 15,189-6,4 7,5 7 Meats 15,266-42,8 7,3 8 Sugar & Ethanol 15,031-8,5 6,2 9 Machines & Equipments 10,573 1,1 4,4 10 Paper & Pulp 6,656-7,4 2,7 Sources: Brazilian Govt/ SECEX/MDIC 5 Brazil Economy: Media 6 3
Brazil Business Opportunities 7 PATENTS 8 4
Brazilian Patent Office The Brazilian Patent Office is receiving approximately 30.000 new patent applications per year. Average time of examination of a patent being presently 6 to 10 years depending on the technical area. The Brazilian Patent Office was nominated in 2009 as an International Search Authority (ISA) under the PCT. 9 Brazilian Patent Office Number of examiners From approximately 100 in 2006 to 273 in 2010. Plans are to hire additional 165 examiners until the end of 2012 and more 165 in 2013. Training - close cooperation with the EPO, German Patent Office, UK Patent Office, Japan Patent Office and USPTO. Presently 70 examiners are undergoing training. 10 5
Brazilian Patent Office Summary of the Situation Main current problem: patent backlog Faster prosecution expected in view of new examiners Fast track Potential infringement cases (warning letter to the alleged infringer) Article 40 of IP Law 20 years from filing OR 10 years as of grant, whichever expires later 11 Patentability Requirements Industrial Applicability Inventive Activity Novelty Enablement (Sufficiency of Disclosure): Articles 24 and 25 of Brazilian Patent Law 12 6
Filing a Patent Application General rule: Translation into Portuguese IN CASE OF URGENCY: Any language; Latin alphabet; Information about the applicant; Information about the inventor; Fulfilled within 30 days. ATTENTION FOR PCT: Portuguese version of the claims. 13 Initial Examination Third parties may present information for aiding examination 18 months 12 months Priority Filing Publication Request for examination Technical examination 36 months 14 7
Amendments during/after examination IP Law Article 32 before the request for examination voluntary amendments filed after the request for examination are acceptable if the alteration consists of: a restriction of the scope of protection; or a correction of minor typing and/or translation mistakes. DURING THE TECHNICAL EXAMINATION To restrict the scope of the claims to the examples described in the application Excluded matter => Divisional application AFTER GRANTING Amendments after the granting only to correct typos 15 Issuance Divisional: it has the same expiry date and filing date of the original application Certificate of Addition: it has the same expiry date of the original application/patent; however the filing date is different from the original application/patent After issuance, interested parties may request administrative nullity of the patent within 6 months of issue Patentee is notified to reply the nullity request Intermediary report is issued; both parties may submit additional comments A decision is issued maintaining or cancelling the patent 16 8
Pharmaceutical Patent Applications Amendment in the IP Law: Law Nº 10196 of Feb 14, 2001 Art. 229-C grant of patents to pharmaceuticals products and processes are subject to prior approval by ANVISA 17 Software Inventions Computer program per se are not patentable in Brazil (article 10, V of the IP Law); Software is protected by specific law (Law n. 9609/98 similar to copyright protection; However, prohibition of patentability is not applicable to method and products that include computer program steps. 18 9
Industrial Designs Term: 10 years of protection, plus three extensions of 5 years possible, totaling 25 years; Requirements: absolute novelty, originality, possibility of industrial manufacture. Automatic registration after formalities examination. Examination on merits is possible under request by the applicant. Nullity proceedings may be instituted ex officio (when contrary to the legal requirements) or at the request of any person having a legitimate interest within 5 years from grant of the registration TRADEMARKS 20 10
Statistics from BTO 15% 18% 21 Protection of Famous Marks (Highly Renown) Art. 125 (IP Law): registered marks considered highly renown receive protection in all classes. Resolution 121/05 (BTO): highly renown marks are those which have undisputable authority, fame and reputation. Duration: 05 years Evidence: 1) Years of use; 2) Potential consumers; 3) Market share; 4) Spontaneous recognition; 5) Induced recognition; 6) Channels of trade; 7) Geographic extension of use; 8) Channels of promotion/advertising; 9) Years of promotion/advertising; 10) Promotion/advertising investment; 11) Volume of sales; 12) economic evaluation of the mark. 22 11
Protection of Famous Marks (Highly Renown) HOLLYWOOD HELLMANN S TRAMONTINA PLAYBOY HAVAIANAS LAND ROVER O BOTICARIO MOCA KIBON DERBY CHICLETS BIC DIAMANTE NEGRO 3M CHANEL CORAL NATURA ITAU BANCO DO BRASIL Total of marks currently recognized as highly renown: 26 23 Protection of Famous Marks (Well-known) Art. 126 (IP Law): protects non-registered marks considered well-know on its field of activity. Corresponding application must be filed (60 days) Converse Inc. vs. All Star Artigos Esportivos (2003) Case law: use and local famous in Brazil are not requirements. 24 12
Trade Dress Protection Art. 195 (IP Law): combats unfair competition. + Art. 130 (IP Law): combats dilution Calypso Bay x Vipi Modas TJGO, 2003 Red Bull x Latco Beverages TJRJ, 2012 25 Secondary Meaning Definition: when a descriptive sign acquires distinctiveness through use (trademark function). IP Law: does not have specific provision (only case law). São Paulo Alpargatas S/A X Cervera Alpargatas Sao Paulo State Court of Appeals, 1987 Valls & Cia Ltda (GASTHAUS) X Brazilian Trademark Office Rio de Janeiro Federal Court of Appeals, 1996 Rio de Janeiro Federal Court of Appeals: descriptive words may become marks through the use. 26 13
ENFORCEMENT 27 Brazilian Court System Dual structure (Civil Cases) IP rights infringement State courts IP validity Federal courts 28 14
B R A Z I L I A N S U P R E M E C OURT (CO N S T I T U T I O N A L C OURT) Federal Circuit Courts of Appeals Federal Judges State Courts of Appeal State Courts Judges Superior Court of Justice Superior Courtsof Justice Appeals against violations or misinterpretation of Federal Laws Federal Courts Lawsuits against Government agencies Trademark or Patent Nullity Actions (BPTO) State Courts Lawsuits against private parties Trademark or Patent Infringement actions 29 Patent Infringement Litigation in Brazil Process patents - reversal of burden of proof Statutory infringement by equivalency and contributory infringement Imported product manufactured by patented process is an infringement Patent applications collecting damages for acts between publication and grant or prior to publication if infringer duly notified. 30 15
Patent Infringement Action No discovery Possible prior criminal search and seizure Seizure of samples Expert report by judge-appointed experts Prison terms (3 months to 1 year) Civil remedies Search and seizure Preliminary and permanent injunctions Damages Plaintiff s lost profits Infringer s profits Reasonable royalty 31 Patent infringement action Typical defense Revocation action Independent lawsuit before a federal court As a matter of defense in the infringement action Non-infringement Patent exemptions IPL 43 performed privately performed for experimental purposes preparation of a medicine for individual cases according to a medical prescription by a compounding pharmacists products placed in the local market by the patentee or with his consent; 32 16
Cancellation as a matter of defense Therefore, said a patent can be challenged by third parties either by means of a matter of a matter of defense or by means of an independent cancellation action. As said, the Industrial Property Law allows, in its article 56, that the validity of a patent can be challenged, at any time, as a matter of defense, which implies the right of a state court judge to decide the validity of a patent In spite of the fact that article 56 allows the possibility of challenging a patent as a matter of defense, in my opinion, this article should be interpreted as an authorization to discuss the validity before the Federal Courts, through a cancellation action. (REsp 1132449 / PR - Relatora Ministra NANCY ANDRIGHI - 3ª Turma STJ - DJe 23/03/2012) 33 Trademark Infringement action Same rules: Dual system: infringement action filed at State Court cancellation action filed at the Federal Court (statute of limitation 5 years from the granting date) No discovery Possible prior criminal search and seizure Search and seizure Preliminary and permanent injunctions Damages 34 17
Parallel Importation Licit is the importation made through an agreement executed with the owner of the trademark registration abroad. Since the lower court established that there was no authorization by the owner of the trademark to import the products, this case falls in the prohibition of article 132, III of the Law 9,279/96. (REsp 1207952/AM Relator Ministro LUIS FELIPE SALOMÃO 4ª Turma/STJ - DJe 01/02/2012) 35 Tips for enforcement: border control Customs are authorized to seize counterfeits Only trademarks and copyrights National database (COANA and CNCP) 36 18
Tips for enforcement: border control How to be effective? File a petition before the Customs Administration Organize training programs Conduct investigations Philip Morris (Marlboro lighters) 37 Final Message Brazilian IP Law: modern tools to protect IP rights. Brazilian enforcement system: different strategies that provide tailored solutions to any case. Brazilian Authorities: focused on meeting international expectations. 38 19
Thank you! Joaquim Eugenio Goulart jgoulart@dannemann.com.br 39 20