The Kellis IP Weekly: Issue 8.4

Written By David Kellis

BRAZIL

Patents

Patent Pendency, Regulatory Data Protection Discussed at Health Forum: The August 21st Health Forum, hosted by think tank Esfera Brasil and Brazilian pharmaceutical laboratory EMS, featured multiple high-level speakers and attendees, including Vice President and MDIC head Geraldo Alckmin; Supreme Court Minister Dias Toffoli; Minister of Health Nísia Trindade; Minister of Institutional Relations Alexandre Padilha; Minister of Management and Innovation Esther Dweck; ANVISA Director Meiruze Freitas; National Supplementary Health Agency (ANS) President Paulo Rebello; and BNDES President Aloizio Mercadante. See https://abifina.org.br/associado-em-foco/esfera-brasil-e-ems-reunem-autoridades-e-empresarios-em-brasilia-para-debater-inovacao-e-acesso-a-saude/ (Portuguese).

While the Brazilian government’s commitment to reduce patent pendency to 2 years sounds positive, many are concerned that the changes necessary to achieve this result (including the elimination of the current 36-month period during which examination can be requested, and during which claim amendments may be made) will in fact render obtaining fair patent protection in Brazil much more difficult. See, e.g., https://app.powerbi.com/view?r=eyJrIjoiNGY2YzllMzctMzIyNy00NTllLWJmMWItMWU3NWU2ZWUxMjM5IiwidCI6ImQ5NWU1MmRjLTBlYWUtNGI3YS1iMjM1LTdlNWU4YTNkZjJiNiJ9&pageName=ReportSection4bb4f3e34cb639314e5a (Portuguese) (summarizing the results of an INPI public consultation). #patents #patentpendency

  • A panel entitled “Data Protection and the Impacts on Innovation” featured Minister Ricardo Villas Bôas Cueva of the Superior Court of Justice (Brazil’s highest non-constitutional court); Senator and former astronaut Marcos Pontes; Laura Schertel, President of the Digital Rights Commission of the National Brazilian Bar Association; Juan Ferrés, CEO of Ferres Economia; and moderator Ana Lya Ferra, Secretary General of the Association of Federal Judges of Brazil. None of the panelists spoke in favor of regulatory data protection. In his remarks, Minister Cueva criticized the innovative pharmaceutical industry for practices such as evergreening, obtaining multiple patents for the same drug, and spreading disinformation, and called for strong antitrust oversight of pharmaceutical patent practices. Senator Pontes questioned whether patents are really necessary to incentivize innovation, then opined that Brazil benefits from not having regulatory data protection and should protect its generics industry for the benefit of public health. Mr. Ferrés argued that society already “pays” for patented innovations by granting a limited patent monopoly and paying 4x higher prices for drugs protected by patents, and also claimed that RDP would only extend the length of time during which high prices must be paid while limiting access to information that could drive innovation. Ms. Schertel observed that RDP’s alleged benefits are ambigous, while its downsides are clear—an increase in costs and a decrease in access to medicine (an individual right) and in competition. Meanwhile, Ms. Ferra cited Brazilians’ constitutional right to health and questioned how granting any additional protection could be aligned with that right. See https://www.instagram.com/p/C-8j0ynS3g_/?utm_source=ig_web_copy_link&igsh=MzRlODBiNWFlZA== (Portuguese); https://www.conjur.com.br/2024-ago-22/protecao-de-patentes-de-remedios-deve-contar-com-atuacao-antitruste-diz-villas-boas-cueva/ (Portuguese); https://x.com/i/broadcasts/1lDGLlbyZZvGm (Portuguese). #patents #tradesecrets #RDP

  • Minister Trindade announced an ordinance strengthening ANVISA’s role in the Economic Health-Industrial Complex, noting that Brazil aims to produce 100% of needed pharmaceutical inputs within 10 years. See https://www.correiobraziliense.com.br/politica/2024/08/6924786-anvisa-tera-maior-participacao-no-complexo-economico-industrial-da-saude.html (Portuguese); https://www.poder360.com.br/brasil/vice-do-tcu-pede-biometria-no-farmacia-popular-a-nisia-e-alckmin/ (Portuguese); #pharmaceuticals #NIB

Chamber of Deputies Considers Proposal for Free Circulation of Traditional Seeds and Seedlings: The proposal, contained in PL 2190/23, provides that multiplication of seeds and seedlings of local, traditional, or Creole cultivars for personal use is free, as is the exchange or commercialization of such seeds or seedlings, exclusively among family farmers, agrarian reform settlers, indigenous people, and their associations, organizations, and cooperatives. Additionally, the bill prohibits any restrictions on the transportation or mailing of such seeds or seedlings, as well as on the inclusion fo such seeds or seedlings in financing programs or in public programs developed with family farmers for the distribution or exchange of seeds. The Agriculture, Livestock, Supply, and Rural Development Committee has approved the bill, which now goes to the Committee on Constitution and Justice and Citizenship for further analysis. Deputy Tadeu Veneri (PT-PR), author of the bill, noted that the measure prevents large corporations from monopolizing the seed market. See https://www.camara.leg.br/noticias/1089690-comissao-aprova-proposta-que-estimula-circulacao-de-sementes-e-mudas-tradicionais/ (Portuguese); https://www.camara.leg.br/proposicoesWeb/prop_mostrarintegra?codteor=2264613&filename=PL%202190/2023 (Portuguese). #seeds #agriculturalIP

Trademarks

Newly Proposed Bill Focuses on Protection of Athletes’ Intellectual Property: On August 20, Deputy Júnior Mano (PL-CE) submitted proposed legislation purporting to regulate the registration of sports moves and personal brands, the use of athletes’ images for commercial purposes, and the use of artificial intelligence in the context of sports. With respect to sports moves, PL 3236/2024 simply provides that registration should occur at INPI per regulations to be issued by the Executive branch. Meanwhile, the written justification for the bill states that “Brazilian legislation should align with the best international practices to guarantee that the rights of athletes are fully protected in the global context,” and explains that the bill was inspired by the Paris Convention, the TRIPS agreement, the Madrid Protocol, and—interestingly, given that Brazil is not a contracting party—the WIPO Performances and Phonograms Treaty, which, according to Deputy Mano, “although focused on artistic performances, offers a precedent for the protection of specific performances, which could include sports moves.” See https://www.camara.leg.br/proposicoesWeb/fichadetramitacao?idProposicao=2454171 (Portuguese); https://www.camara.leg.br/proposicoesWeb/prop_mostrarintegra?codteor=2467213&filename=PL%203236/2024 (Portuguese). #trademarks #copyright #IPgenerally #sportsIP #ParisConvention #MadridProtocol #WPPT

INPI to Update Trademark Manual Continously: Following an August 21 update to the Trademark Manual (dealing with situations in which express authorization is needed to register a name, signature, or image as a trademark), INPI will switch to using dates, rather than edition and revision numbers, to identify successive versions of the manual. Changes incorporated into each version of the manual will be listed on INPI’s website, at https://manualdemarcas.inpi.gov.br/projects/manual/wiki/Atualiza%C3%A7%C3%B5es (Portuguese). See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/manual-de-marcas-sera-atualizado-de-forma-continua (Portuguese). #trademarks #IPoffice #trademarkprocedure

Timing of Trademark Application, Not First Use, Critical Issue in Assessing Trademark Rights:  Judge Eduardo Kahler Ribeiro, from the 4th Federal Court of Florianópolis in Santa Catarina, sided with INPI in a suit brought by a local company over INPI’s refusal to register its name, “USINA DO HAMBURGUER,” as a trademark. INPI had rejected the mark due to a likelihood of confusion with the prior mark “USINA HAMBURGUERIA GOURMET.” The plaintiff argued that its October 2015 incorporation date gave it a right of precedence over the company that owned the registered mark, which was founded in May 2016. But the court disagreed, noting that the plaintiff had not even opposed registration of the registered mark and that Brazil has a first-to-file registration system. Judge Ribeiro also rejected the plaintiff’s geography-based argument that because the two companies are located in different states, there would be no consumer confusion. See https://www.migalhas.com.br/arquivos/2024/8/F78418F908EDD1_SENT.pdf (Portuguese); https://www.migalhas.com.br/quentes/413501/juiz-veta-registro-da-usina-do-hamburguer-de-sc-em-acao-contra-rival (Portuguese).  #trademarks #IPlitigation

Copyright

Congressman Defeats Copyright Infringement Suit Brought by Singer Roberto Carlos:  The famous 83-year-old musician sued Federal Deputy Tiririca over a video in which the deputy imitates the singer, including by threatening to throw a microphone at a member of the audience (a reference to a show in which Roberto Carlos told a fan to “shut up”).  The case, originally filed in 2022, was decided in the first instance by Judge Guilherme Madeira Dezem of the 44th Civil Court of São Paulo in Deputy Tiririca’s favor, on the basis that the video was a parody within Deputy Tiririca’s freedom of expression rights, and for lack of proof of damage to Roberto Carlos’ image or reputation.  The rapporteur of the case on appeal, Judge Pedro Alcântara da Silva Leme Filho of the 8th Private Law Chamber, and his colleagues jointly affirmed the lower court decision.  See https://www.migalhas.com.br/quentes/413383/tj-sp-nega-pedido-de-roberto-carlos-e-mantem-parodia-de-tiririca-no-ar (Portuguese).  #copyright #parody #IPlitigation

Ticketing Platform Bilheto to Handle Copyright Royalty Payments on Behalf of Clients: Beginning immediately, producers of events that contract with online ticket platform Bilheto no longer need to pay copyright royalties to Brazil’s Central Office of Collection and Distribution (ECAD), as the platform will make the payments on the producers’ behalf. See https://www.correiobraziliense.com.br/diversao-e-arte/2024/08/6924939-produtores-de-eventos-nao-precisam-mais-pagar-ecad-entenda.html (Portuguese). #copyright #ECAD #royalties

Licensing Fees for Designs Protected by Copyright Still Tax-Deductible Even If Designs Also Protected by Trademarks: The First Panel of the Superior Chamber of Tax Appeals (CSRF), in Ruling 9101-006.889, concluded that amounts paid for the commercial use of artistic designs of characters in accordance with copyright licensing agreements are deductible operating expenses (rather than trademark royalties), regardless of whether such designs have been registered with INPI as trademarks. See https://www.conjur.com.br/2024-ago-21/natureza-juridica-do-uso-do-tio-patinhas-cessao-de-direito-autoral-ou-cessao-de-marca/ (Portuguese). #copyright #trademarks #royalties #licensing

Enforcement

Harman Speaks Out About Counterfeiting Challenges in Brazil: Rodrigo Rihl Kniest, president of Harman in Brazil, drew attention to the negative effects of counterfeiting in an interview with CNN. Mr. Kniest observed that counterfeiters engage in unfair competition by not paying taxes and not worrying about compliance with safety regulations (thus jeopardizing consumer safety as well), and emphasized that raising awareness and educating the population will make a difference. See https://www.cnnbrasil.com.br/economia/negocios/pirataria-e-problema-social-de-seguranca-e-de-imagem-diz-presidente-da-fabricante-da-jbl-no-brasil/ (Portuguese).  #IPenforcement #counterfeits

ANATEL’s Inspection Superintendent Shares Results, Previews Coming Automation:  The National Telecommunication Agency’s Marcelo Alves da Silva reported that more than 1.5 million IPTV boxes, worth R$420 million, were seized in the first half of 2024. Most arrived via the Port of Barcarena in the state of Pará, but others entered through Argentina, Paraguay, and Uruguay. ANATEL has also permanently blocked 623 IP addresses and about 10 URLs, and is monitoring 9,280 IP addresse and 1,514 URLs. According to Mr. da Silva, blocking URLs can be difficult as it requires cooperation from DNS providers, some of whom are located outside Brazil and are therefore not regulated by ANATEL. The agency is currently working to automate its operations (which would allow an increase in both the number of operations and the number of participants in those operations) and also expects to have news soon regarding “fundamental” cooperation with ANCINE. See https://teletime.com.br/20/08/2024/para-reforcar-combate-a-pirataria-anatel-quer-automatizar-operacoes/ (Portuguese).  #IPenforcement #piracy #IPTV #siteblocking

Other

ABIFINA Continues Campaign Against Regulatory Data Protection: An article by ABIFINA Vice President of Regulatory Affairs Juliana Bergantin Megid, published in the July 31 issue of “Química e Derivados,” strongly criticizes multinational pharmaceutical countries for their efforts to secure regulatory data protection for human medicines in Brazil. Ms. Megid argues that regulatory data protection has already been found unconstitutional by the Supreme Court; that the Brazilian market is sufficiently attractive to foster innovation without RDP; that RDP would cripple Brazil’s generics industry; and that RDP would only extend exclusivity for medicines beyond patent expiration, leading to a windfall for foreign companies and prejudicing the Brazilian population by limiting access to low-cost medicines. See https://abifina.org.br/abifina-na-midia/data-protection-x-medicamentos-de-uso-humano/ (Portuguese). #tradesecrets #RDP

Non-Compete Agreements Valid in Brazil, but Frequently Challenged: Although not specifically regulated, non-compete clauses within employment agreements are generally enforceable in Brazil, if the employer has a legitimate interest in protecting against unfair competition, if the clause clearly defines the geographical, temporal, and substantive nature of the restrictions, and if the employee is provided with adequate compensation so as to not be financially harmed. Even so, the Labor Court currently has 880 pending cases dealing with non-compete agreements, with 245 in the Southeast Region of Brazil (São Paulo, Rio de Janeiro, Espírito Santo, and Minas Gerais). Where the foregoing requirements are met, decisions in such cases have trended toward upholding the contractual limitation. See https://www.migalhas.com.br/depeso/413414/os-acordos-de-nao-competicao-no-mercado-de-trabalho-globalizado (Portuguese). #tradesecrets #noncompetes

Meanwhile, in the U.S., Judge Ada Brown of the Northern District of Texas struck down the FTC’s ban on most non-compete agreements, which was scheduled to go into effect on September 4, 2024. See https://www.cnn.com/2024/08/20/business/us-judge-strikes-down-noncompete-agreements/index.html (English). #tradesecrets #noncompetes

INPI, CNIPA Discuss Cooperation: During an August 16 meeting at INPI headquarters, representatives of both offices discussed Brazil’s trademark system, accelerated examination initiatives for patent applications, and the use of AI and cybersecurity IT tools. The CNIPA delegation, led by Deputy Commissioner Hu Wenhui, expressed interest in renewing the bilateral PPH agreement between China and Brazil, and emphasized interest in seeing INPI increase the yearly cap on PPH applications from its current level of 800. The offices also plan to continue their cooperation in other areas, and to that end will work toward a renewal of an existing MOU during the 2025 BRICS meeting in Rio de Janeiro. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/brasil-e-china-discutem-cooperacao-em-propriedade-industrial (Portuguese); https://www.linkedin.com/posts/leopoldo-coutinho-b84292136_inpibrasil-cooperaaexaetointernacional-marcas-activity-7231351183263596545-MqpS? (English). #IPoffice #patents #internationalcooperation #PPH

Brazil joined the Global PPH in July 2024, but China does not participate in that program—hence the discussion of the two offices renewing their bilateral PPH agreement. #GlobalPPH

Non-IP Topics of Interest

Study Touts Positive Financial Impact of Federal Audiovisual Production Incentive:  International creative industries consultancy Olsberg SPI published The Economic Impact Study for a New Federal Audiovisual Production Incentive in Brazil.  The study concluded that an automatic production incentive capped at US$25 million would cause an almost 13% increase in gross value added to the Brazilian economy by audiovisual production activity (relative to the projected gross value added with no production incentive) from 2024-2030, while an incentive capped at US$100 million would yield a 45% increase and an uncapped incentive would yield an increase greater than 67%.  The study’s publication comes just after the Ministry of Culture launched the National Creative Economy Policy, which seeks to position culture as a vector for social and economic transformation.  See https://www.o-spi.com/news/spi-brazil-incentive-economic-impact-study-published (English); https://www.gov.br/cultura/pt-br/assuntos/noticias/ministerio-da-cultura-lanca-brasil-criativo-diretrizes-da-politica-publica-para-fortalecer-a-economia-criativa (Portuguese). #creativeindustry #audiovisualindustry

Speakers at Tax Reform Hearing Raise Concerns: In the latest of 11 planned Senate hearings on tax reform implementation bill PLP 68/2024 before the expected October 22 issuance of a final report regarding that bill, participants from the energy, credit card, business, and payments sectors all raised concerns about the potential negative effects of the bill on their respective sectors. In a sign of the difficulty of reaching an acceptable implementation framework, more than 1,000 amendments to the bill have been submitted. Meanwhile, the temporary committee tasked with reviewing the bill had its mandate, which was set to expire on August 20, extended for 110 days, until early December. Meanwhile, the Chamber of Deputies will continue voting on a second tax reform implementation bill on August 26. See https://www12.senado.leg.br/noticias/materias/2024/08/21/debatedores-mostram-preocupacao-com-sistema-de-impostos-na-reforma-tributaria (Portuguese); https://www12.senado.leg.br/noticias/materias/2024/08/21/comissao-temporaria-tem-prazo-de-funcionamento-prorrogado (Portuguese); https://www.camara.leg.br/noticias/1089607-camara-retoma-no-dia-26-votacao-do-segundo-projeto-da-reforma-tributaria/ (Portuguese). #taxreform

Bill on Tech Transfer Advances in Chamber’s Committee Review Process: PL 3946/12, proposed by deputy Jandira Feghali (PCdoB-RJ), was approved by the Committee on Administration and Public Service. The bill fills a gap in Brazil’s existing Innovation Law (Law 10,973 of December 2, 2004) by authorizing public agencies who finance resarch and development to purchase innovative products or processes resulting from that investment. More specifically, the bill allows public agencies to include a clause in the financing contract providing for eventual acquisition of the fruits of the research and development, and for any related technology transfer. See https://www.camara.leg.br/noticias/1090343-comissao-aprova-projeto-com-regra-para-compra-publica-de-produto-inovador/ (Portuguese); https://www.camara.leg.br/proposicoesWeb/prop_mostrarintegra?codteor=995337&filename=PL%203946/2012 (Portuguese). #techtransfer

New Bill Would Require Warnings for Videogames, Social Media, Software, Smartphones, Computers, and Tablets: Deputy Dorinaldo Malafaia (PDT/AP) proposed, on August 19, legislation that would create a National Campaign for the Conscientious Use of Digital Technology to share information about the responsible use of, as well as the potential risks of excessive use of, digital technology. PL 3224/2024 would also require the packaging and advertising of such products to include warnings about the potential risks to children and adolescents of excessive use thereof. See https://www.camara.leg.br/proposicoesWeb/fichadetramitacao?idProposicao=2453934 (Portuguese); https://www.camara.leg.br/proposicoesWeb/prop_mostrarintegra?codteor=2466237&filename=PL%203224/2024 (Portuguese). #techregulation #legislation

PERU

INDECOPI Organizes Anti-Counterfeiting Workshop at APEC Forum:  The workshop, part of the Third Meeting of Senior Officials of the Asia-Pacific Economic Cooperation Forum (APEC) 2024, focused on combatting trademark counterfeiting in the digital environment. INDECOPI’s executive president, Alberto Villanueva Eslava, celebrated the positive results of a collaboration agreement between the agency and Mercado Libre, and noted INDECOPI’s interest in signing similar agreements with other major e-commerce platforms. See https://www.gob.pe/institucion/indecopi/noticias/1005132-apec-indecopi-impulsa-dialogo-para-fortalecer-la-lucha-contra-la-falsificacion-de-marcas-en-el-entorno-digital (Spanish).  #IPenforcement #counterfeits

PARAGUAY

Director Franco Quevedo Celebrates One-Year Anniversary:  During her first year at the head of DINAPI, Claudia L. Franco Quevedo has overeen 326 IP enforcement actions throughout the country, supported 149 cultural projects in the creative and folklore industries, provided education and raised awareness about copyright and related rights in the academic, scientific, and research environment, and entered into partnerships with university research centers and technology transfer offices. See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=453 (Spanish).  #IPoffice #IPenforcement #creativeindustry #IPeducation #trechtransfer

U.S. PUBLIC CONSULTATIONS

2024 Review of Notorious Markets for Counterfeiting and Piracy Request for Comments:  The United States Trade Representative has published a request for comments identifying online and physical markets to be considered for inclusion in the 2024 Review of Notorious Markets for Counterfeiting and Piracy (Notorious Markets List).  The 2024 list’s “issue focus” will be online pharmacies and counterfeit medicine.  Written comments due October 2, 2024; rebuttal comments due October 16, 2024.  See https://www.govinfo.gov/content/pkg/FR-2024-08-16/pdf/2024-18337.pdf (English).  #IPenforcement #publicconsultation #counterfeits #piracy

Kellis IP is available to help draft comments in response to the USTR’s request.

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).  #patents #publiconsultation

UPCOMING IP EVENTS

August 22, 2024: Webinar: Treaty Regarding IP, Genetic Resources, and Associated Traditional Knowledge. Online. https://app.abpi.org.br/Evento/Hotsite/173 (Portuguese).

September 11-13, 2024: XVI Academic Meeting of IP, Innovation, and Development (ENAPID). Online. https://www.gov.br/inpi/pt-br/servicos/a-academia/eventos-academicos/enapid (Portuguese).

September 13, 2024: The Importance of Judicial Action for the Standard Essential Patent System. Online. https://emerj.tjrj.jus.br/evento/8510 (Portuguese).

September 22-24, 2024: Intellectual Property Owners Association 2024 Annual Meeting. Chicago, Illinois. https://ipo.org/index.php/am2024/ (English).

October 1-2, 2024: IIPLA USA 2024. Palo Alto, California. https://iipla.org/events/USA/ (English).

October 24-26, 2024: AIPLA 2024 Annual Meeting. National Harbor, Maryland. https://www.aipla.org/home/meetings-education/2024-annual-meeting (English).

January 22-24, 2025: World Intellectual Property Forum. Dubai. https://www.worldipforum.com/ (English).

March 20-23, 2025: XX ABAPISUL Regional Meeting. Foz do Iguaçu, Brazil. https://abapi2.org.br/ (Portuguese).

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.

David Kellis
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