Provisional Patent Application in Brazil – Chamber approves the bill

The Chamber of Deputies approved on Tuesday (06/29/21) Bill no. 10920/20, proposed by deputies Julio Lopes (PP-RJ) and Paulo Abi-Ackel (PSDB-MG). The proposal will be sent now for analysis of the Senate.

The project was approved in the substitute form of the rapporteur Deputy Efraim Filho (DEM-PB). According to the parliamentarian’s text, the provisional application will be created, a procedure already adopted in other countries, such as Portugal.

“The provisional application will help inventors gain time to make new studies, proofs of concept, and prototypes to improve their technical knowledge before submitting the definitive application”, explained the rapporteur.

The National Institute of Industrial Property (INPI) must establish the conditions of the provisional application, which must contain an application, a clear and sufficient description of the application’s object to allow its implementation, and proof of payment of the government fees.  However, the provisional application cannot claim priority from previous applications.

In 12 months, the provisional application shall be converted into a patent application. After this time, if the inventor does not apply for the conversion, the application will be considered definitely abandoned.

In any case, the conversion may not result in a patent application whose subject matter exceeds the content of the provisional application.

The patent term if the application is granted will be counted from the date of the provisional application filing.

Foreign Attorney

A mechanism for the exchange of information between the Judiciary and the Brazilian PTO (INPI) will be included in the patent law, so that this Institution can notify the sued party through WIPO, so that the owner of the questioned patent application presents its attorney within 60 calendar days to receive the Court notice. If the foreign owner of the patent application does not present the attorney within this period, the INPI may extinguish the patent application or registration.

However, after a suggestion for amendment by Deputy Adriana Ventura (Novo-SP), Efraim Filho removed from the text, the need for Brazil to be a signatory of international agreements that require the obligation of an attorney for the mechanism to be applied.

Registration search

In order to solve INPI’s interpretation doubts, the approved text allows the applicant to change any of the documents presented along with the patent application to better clarify or define its object.

To facilitate the examination of the patent application and adapt INPI’s operating tools, Efraim Filho included permission for the Institute to use as support the opinions carried out and published by Patent Offices in other countries and by international or regional organizations.

INPI is one of the 20 international authorities for the search and examination of the Patent Cooperation Treaty (PCT).

Simple translation

As for the submission of translations, the approved substitute provides that documents in a foreign language sent together with the patent application will only depend on a simple translation presented at the time of filing the application or within the following 30 days.

This will apply to the descriptive report, claims, drawings (if applicable), and abstract.

Source: Agência Câmara de Notícias