Grace period in Brazil, how does it work?

Some national legislations provide the “grace period” and in Brazil it is allowed!

Grace period is the 12-month period prior to filing a patent, in which the patent inventor can disclose it without having complications, since it does not affect the “state of the art” during the examination. In other words, if the invention is disclosed before filing the Brazilian Patent Application, it will not lose its novelty.

That grace period rule is provided on Article 12 of the Brazilian Industrial Property Law No. 9,279/96:

“Art. 12. The disclosure of an invention or utility model shall not be considered to be state of the art if it occurred during the 12 (twelve) months preceding the date of filing or of priority of the patent application, if made:

I. by the inventor;

II. by the National Institute of Industrial Property, by means of official publication of the patent application filed without the consent of the inventor, based on information obtained from him or as a consequence of actions taken by him; or

III. by third parties, based on information obtained directly or indirectly from the inventor or as a consequence of actions taken by him.

Sole Paragraph. The INPI may require from the inventor a statement related to the disclosure, accompanied or not by proofs, under the conditions established in regulations.

Grace period applied in practice

We had a recent case in which the grace period rule was applied in practice.

Patent application “STRAIGHTENING EQUIPMENT FOR CANVAS AND CONGENERS” (BR 10 2013 008156 6) applied by our client MERCADO IDENTIFICAÇÃO VISUAL LTDA was initially refused by the Brazilian PTO that argued that the invention has already been disclosed by another company on a YouTube channel, approximately 3 months before the Brazilian patent filing.

Therefore, it is important to emphasize that if you intend to disclose your invention, the patent application should be filed before or up to 12 months after the disclosure to avoid the refusal of your application in the country due to the lack of novelty.

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