The Kellis IP Weekly: Issue 8.1
Patents
Criteria Established for Preliminary Injunctions in SEP Litigation: As a jurisdiction where preliminary injunctions may be obtained relatively easily, including in patent infringement lawsuits, Brazil has attracted a fair amount of SEP litigation. Two recent court decisions may signal a shift in approach to preliminary injunctions in such cases, however. In one, a preliminary injunction that had already been granted was revoked, the lawsuit was dismissed, and the plaintiff was ordered to pay compensation for malicious litigation after an independent court-appointed expert found a lack of patent infringement. In the second, Judge Victor Augustin of Rio de Janeiro’s Sixth Business Court set forth the following requirements in SEP cases in which a preliminary injunction has been requested: (1) the patentee must prove compliance with FRAND conditions; (2) a court-appointed expert must provide a concise unbiased opinion, elicited through questions posed to the expert by the judge only; (3) only documents with trade secrets clearly identified by the parties will be sealed, to ensure maximum transparency; and (4) the plaintiff must post a bond. See https://www.iplink-asia.com/article-detail.php?id=1169 (English). #patents
ABIFINA Representative Speaks Out Against Regulatory Data Protection: Intellectual Property Specialist Ana Claudia Oliveira of the Brazilian Association of Fine Chemical, Biotechnology, and Specialty Industries (ABIFINA) argued that the application of regulatory data protection to human medicine could delay the entry of generic drugs onto the market by up to 5 years, thus negatively affecting access to affordable drugs. Ms. Oliveira also criticized lawsuits filed by pharmaceutical companies to obtain patent term extensions, and noted that around 200 key drug patents should expire in 2024, leading to an increase of generic drugs in Brazil. See https://abifina.org.br/abifina-na-midia/especialista-em-propriedade-intelectual-da-abifina-discute-impacto-da-protecao-de-dados-de-testes-clinicos-no-panorama-talks/ (Portuguese). #patents
Trademarks
Singer Loses Trademark Infringement Case Over Nail Polish Name: Judge Larissa Gaspar Tunala ruled in favor of Modo Turbo Royalties and Licenses, a cosmetics company established in 2018, after the company accused singer Luísa Sonza of infringing its MODO TURBO trademark. The singer had joined with artists Anitta and Pabllo Vittar to create the music collab “Modo Turbo” in 2021, and after partnering with cosmetics company Dailus in 2022, launched a line of nail polishes named after her songs—including one called Modo Turbo. Sonza was ordered to pay R$25 thousand in moral damages, with interest, as well as actual damages to be determined, and has an opportunity to appeal. See https://www.terra.com.br/diversao/gente/luisa-sonza-e-condenada-por-usar-musica-em-nome-de-esmalte-valor-da-causa-e-de-r170-mil,e0b63374c1a27f5c8b6d2dd31712dd5fhysbaifr.html (Portuguese). #trademarks
Copyright
Institute of Brazilian Attorneys Suggests Changes to AI Bill: A report prepared by the IAB’s Artificial Intelligence and Innovation Commission and subsequently approved by the IAB plenary recommends that Article 61 of PL 2338/23, which creates a copyright exception for text and data mining used to train AI systems, be removed, given the absence of limitations regarding the use of such data. The report also recommends that the bill be modified to ensure rightsholders can opt-out of having their works used for AI system training. See https://www.iabnacional.org.br/noticias/iab-sugere-alteracoes-em-pl-que-regula-uso-de-ia-e-propoe-a-criacao-de-um-conselho-nacional-de-inteligencia-artificial (Portuguese). #copyright
Progress of AI Bills Slows as Opponents Raise Concerns: The Senate’s Temporary Internal Committee on Artificial Intelligence has received a third extension of time, until September 15, to send a completed version of PL 2338/23 to the Senate Plenary for debate. While Senate President Rodrigo Pacheco considers the bill a priority, opposition lawmakers believe the bill is overly broad and gives the government too much power, and have started a social media campaign against the bill using hashtag #PL2338. Brazil’s National Confederation of Industry (CNI) believes the bill would stifle innovation if passed, and big tech companies have also expressed opposition to the bill. See https://www.cnnbrasil.com.br/politica/oposicao-resiste-a-regulamentacao-da-inteligencia-artificial-e-trava-avanco-de-projeto-no-senado/. #copyright
Enforcement
INPI Improves Functionality of National Directory to Combat Trademark Counterfeiting: The improved directory enables law enforcement authorities to quickly access the contact information of brand representatives in Brazil. Also, the directory allows brand owners to list contact information for multiple representatives, such that in-house counsel as well as outside counsel can both be listed. Different representatives can be designated for different product segments. See https://intellectual-property-helpdesk.ec.europa.eu/news-events/news/inpi-brazil-launches-new-anti-counterfeiting-tool-2024-07-29_en (English); https://www.worldtrademarkreview.com/article/breaking-the-bottleneck-brazil-launches-new-functionality-combat-counterfeiting (English). #IPenforcement
Other
INPI Seeks Solutions to Industrial Design IT Challenges: INPI’s July 30, 2024 IP Gazette includes an announcement that due to IT issues, certain documents related to industrial design applications are unavailable on the agency’s Buscaweb system, and that industrial design registration certificates cannot currently be issued. Both problems are forecast to be resolved by the end of August. See https://revistas.inpi.gov.br/pdf/Comunicados2795.pdf (Portuguese). #industrialdesigns
Non-IP Topics of Interest
Ministry of Science, Technology, and Innovation Unveils National AI Plan: The plan calls for Brazil to invest more than R$22 billion total in five areas: infrastructure and development; dissemination, training, and qualification; improvement of public services; business innovation; and support for regulatory and governance processes. The plan calls for Brazil to develop a supercomputer; launch its own cloud to reduce dependence on foreign tech firms for cloud data storage; build data processing centers powered by renewable energy; create a Portuguese large language model; and launch an AI training program that includes degrees in AI as well as scholarships for AI-focused degrees outside of Brazil. See https://oglobo.globo.com/ economia/noticia/2024/07/30/plano-brasileiro-de-ia-preve-r-23-bi-supercomputador-e-sistema-para-o-sus.ghtml (Portuguese); https://oglobo.globo.com/ economia/noticia/2024/07/30/plano-do-governo-para-ia-preve-nuvem-nacional-e-bolsas-de-doutorado-no-exterior.ghtml?utm_source= newsletter&utm_medium=email&utm_campaign=newstarde (Portuguese).
Government Cuts $15 Billion in Spending from Budget to Meet Fiscal Targets: In light of higher-than-expected non-discretionary expenses and a stated commitment to honor an agreement to maintain a balanced budget in 2024, President Lula issued a decree on Tuesday, July 31 formalizing the previously announced spending cut. The Ministries of Cities, Transportation, and Education suffered the largest cuts. The Ministry of Development, Industry, Commerce and Services (MDIC), which houses INPI, suffered a cut of only R$64.6 million, while the Ministry of Justice and Public Security, which houses the National Counsel to Combat Piracy, suffered a cut of R$279 million. Ministries have until Tuesday, August 6 to determine how the spending cuts will be implemented. See https://pesquisa.in.gov.br/imprensa/jsp/visualiza/index.jsp?data=30/07/2024&jornal=600&pagina=1&totalArquivos=15 (Portuguese); https://agenciabrasil.ebc.com.br/radioagencia-nacional/economia/audio/2024-07/governo-oficializa-congelamento-de-r-15-bi-no-orcamento (Portuguese).
Ministry of Culture to Launch Plan for Creative Economy: During a series of G20 meetings in Rio de Janeiro from August 5-9, Minister of Culture Margareth Menezes will unveil a new National Creative Economy Policy. The policy, which will be referred to as “Creative Brazil,” will seek to strengthen the creative sector in furtherance of the socioeconomic development of the country, in alignment with national priorities and global challenges. Additionally, a new Secretary of the Creative Economy position will be created within the Ministry of Culture to administer the policy. See https://veja.abril.com.br/coluna/radar/a-iniciativa-que-o-ministerio-da-cultura-vai-lancar-durante-reuniao-do-g20/ (Portuguese).
ARGENTINA
Argentina Turns Attention to AI Regulation: With President Javier Milei anxious for Argentina to become a global hub for the AI revolution—and thus a recipient of much-needed foreign investment—the Science, Technology, and Productive Innovation Committee of the House of Representatives will begin next week to debate at least ten bills proposing to regulate AI. Most of the bills in question were introduced last year, but according to technology industry representatives, it has since become clear that the EU’s AI regulations (including the EU requirement that AI companies comply with copyright laws) have had a negative impact on AI innovation in Europe. As a result, they argue in favor of a framework that creates regulatory sandboxes in which AI platforms can be freely tested in a regulation-free environment. See https://www.lanacion.com.ar/economia/inteligencia-artificial-el-impensado-riesgo-que-podria-trabar-uno-de-los-negocios-que-mas-le-nid31072024/ (Spanish). #copyright
INPI Imposes New Fee on Trademark Applicants Whose Applications Have Been Opposed: Citing a large backlog of trademark applications with oppositions pending, scarce resources, and a significant number of cases in which opposition filers and INPI have expended significant resources only to have the trademark applicant ignore the process and eventually abandon trademark applicant, INPI has imposed a new fee—currently set at 8,900 pesos, less than US$10—on trademark applicants who wish to obtain an administrative resolution of pending oppositions. The fee is payable only once per opposed application, regardless of how many oppositions have been filed. Additionally, for pending applications that have already been opposed, the INPI will send a notice to the applicant of the new fee requirement, and the fee must be paid within 15 days. In any case in which a trademark applicant fails to pay the fee within the appropriate time period, the registration application will be denied. See https://www.boletinoficial.gob.ar/detalleAviso/primera/311064/20240723 (Spanish). #trademarks
CHILE
Director Bresky Leaves INAPI for WIPO: Five years after being appointed to lead INAPI, Loreto Bresky is leaving the agency to become the Senior Director of the PCT for Legal and International Affairs at WIPO. During Ms. Bresky’s tenure, Chile joined the Madrid Protocol, modernized its IT systems, and implemented the “Short Law of INAPI” that adapted Chile’s IP system to international standards. See https://www.inapi.cl/sala-de-prensa/detalle-noticia/loreto-bresky-pone-termino-a-su-segundo-periodo-como-directora-nacional-de-inapi-tras-cinco-anos-de-gestion-institucional (Spanish). #IPoffice
Chile Claims Top Spot in Latin America on AI: According to the Latin America AI Index 2023, released by Chile’s own National Artificial Intelligence Center (CENIA), Chile ranks first in Latin America for AI, based on its progress in the areas of infrastructure, professional training, research, and adoption of AI technologies. The country debuted a National AI Policy in 2021, including a 10-year action plan for accomplishing the policy’s objectives. Chile also introduced Latin America’s first Ph.D. program in AI. Pending legislation in Chile would implement a risk-based AI governance system similar to that created by the EU’s AI Act. See https://www.marcachile.cl/en/chile-se-alza-como-lider-en-inteligencia-artificial-en-america-latina/ (Spanish); https://dig.watch/updates/chile-introduces-updated-national-ai-policy-and-new-ai-legislation (English).
Article 31 of Chile’s draft bill on artificial intelligence, Boletín 16821-19 of May 7, 2024, creates a broad exception to intellectual property rights by adding the following language to Chile’s Intellectual Property Law (Law 17,336), under the heading “Limitations and Exceptions to Copyright and Related Rights”:
“Article 71 T.- Any act of reproduction, adaptation, distribution or communication to the public of a lawfully published work is lawful, without remuneration or obtaining authorization from the owner, when said act is carried out exclusively for the extraction, comparison, classification, or any other statistical analysis of language, sound or image data, or of other elements that make up a large number of works or a large volume of data, provided that said use does not constitute a hidden exploitation of the protected work or works.”
See https://tramitacion.senado.cl/appsenado/index.php?mo=tramitacion&ac=getDocto&iddocto= 33295&tipodoc=ofic (Spanish). #copyright
National Congress Approves Chile’s Entry into Classification Agreements: Four proposals regarding Chile’s entry into various classification agreements—the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, the Strasbourg Agreement Concerning the International Patent Classification, the Locarno Agreement Establishing an International Classification for Industrial Designs, and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks—were approved by the National Congress and will now be sent to the President for signature. See https://www.senado.cl/comunicaciones/ noticias/respaldan-proyectos-de-acuerdo-internacionales-que-estandarizan (Spanish). #trademarks #patents #industrialdesigns
PARAGUAY
DINAPI, CAFYF Sign Agreement: The agreement between DINAPI and the Chamber of Phytosanitary Products and Fertilizers provides for inter-institutional cooperation to promote joint activities connected with the protection and defense of IP rights. See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=446 (Spanish). #patents #IPoffice
Anti-Piracy and Counterfeiting Directorate Inspection Leads to Counterfeit Spare Parts: Using risk profile analysis, the DINAPI directorate inspected a container located in a private port in Villeta and discovered 800 units of counterfeit Bosch spare parts. DINAPI reported the finding to the Specialized IP Unit of the Public Prosecutor’s Office, which obtained a judicial order to seize the products for storage while an investigation into those responsible continues. See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=447 (Spanish). #IPenforcement
U.S. PUBLIC CONSULTATIONS
USPTO – Experimental Use Exception Request for Comments: Published June 28, 2024; closes September 26, 2024. See https://www.federalregister.gov/documents/2024/06/28/2024-14164/experimental-use-exception-request-for-comments (English).
*Registration Closes Soon* USPTO – Public Roundtable on Protections for Name, Image, Likeness, Other Indicia of Identity, and Reputation: Separate in-person and virtual roundtables will be held on August 5, 2024. The deadline to request a speaking slot has passed, but registration for attendance is still possible. See https://www.uspto.gov/about-us/events/public-roundtable-ai-and-protections-for-use-of-individuals-name-image-or-likeness (English).
QUESTIONS OR CONCERNS
Kellis IP is available to provide consulting services to help you understand and respond to any of the developments highlighted in this newsletter, or any other IP issues in Brazil and the surrounding region.
