The Kellis IP Weekly: Issue 8.5
BRAZIL
Patents
INPI Gives Some Patent Owners 60 Days to Provide Information about Access to Genetic Resources: INPI’s August 27 Industrial Property Gazette contains a public notice explaining that in some cases, INPI has issued patents to applicants who affirmed that the subject invention involved access to genetic resources, but never provided the corresponding SisGen registration number as required by law. Affected patent owners should receive an email from INPI alerting them of the necessity of correcting the error, and have 60 days from the date of the public notice to follow the accompanying instructions for making the correction. Patent owners who fail to comply risk having their patents invalidated, as SisGen registration is required under Brazilian law. See https://revistas.inpi.gov.br/pdf/Comunicados2799.pdf (Portuguese); https://www.gov.br/mma/pt-br/assuntos/bioeconomia/patrimonio-genetico/sisgen-2 (Portuguese). #patents #geneticresources #SisGen #ABS
INPI Publishes Patent Appeal Procedure: On August 28, INPI published the procedures for technical examination of patent applications on appeal, with the goal of orienting second-instance examiners as to the correct method of analyzing appeals and preparing technical opinions. The procedures implement INPI’s April revisions to the patent appeal process, including, for example, an instruction that papers presented during an appeal should be analyzed to verify that all arguments on appeal were previously raised in the first instance. See https://www.gov.br/inpi/pt-br/servicos/recursos-e-nulidades/2024cgrec_no_4.pdf (Portuguese); https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-divulga-procedimento-relativo-ao-exame-de-recursos-de-patentes (Portuguese). #patents #patentappeals #administrativeappeals #patentprocedure
São Paulo World’s 73rd Largest Science and Technology Cluster: The only city in Latin America to make WIPOlist of the top 100 science and technology clusters, São Paulo saw an average of 39 PCT applications and 1,355 scientific articles per million inhabitants over the last five years. The most active technology field for patent filings in São Paulo is medical technology, accounting for 10% of filings; other active technology fields included organic fine chemistry (8%), machinery (8%), molecular chemistry (6%), pharmaceuticals (6%), and basic materials chemistry (6%). See https://www.wipo.int/web/global-innovation-index/2024/science-technology-clusters (English); https://www.wipo.int/documents/d/global-innovation-index/docs-en-2024-br-sao-paulo-73.pdf (English). #patents #PCT #WIPO
Trademarks
STJ Invalidates DELINIA Mark as Confusingly Similar to D’LINEA: Brazil’s highest non-constitutional court cancelled the registration of the mark DELINIA, for furniture, and prohibited the use of the mark in commerce, in a suit brought by D’Linea, a company that also operates in the furniture space. In reaching the decision, the STJ reversed the appellate court, which had found both names generic in nature within the furniture sector, and essentially reinstated the trial court decision. The court reasoned that trademark protection is intended to differentiate similar products and services; that the two marks at issue were graphically and phonetically similar; and that particularly when used in the same sector, the use of both marks could cause consumer confusion. The court’s decision aligned with INPI’s recommendation to cancel the registration. See https://www.migalhas.com.br/quentes/413856/stj-anula-marca-de-moveis-delinia-por-semelhanca-com-marca-d-linea (Portuguese). #trademarks #trademarklitigation #consumerconfusion #IPlitigation
Copyright
Musicians Call for Copyright Reform, Citing Low Payments from Streaming Services: Singer and composer Makely Ka, who has recorded over 300 songs, makes more from a single CD sale than he made from Spotify—which pays, on average, $0.03 per track per month—before leaving that platform in protest. Now, he and other artists are calling for modernized legislation that addresses streaming and artificial intelligence, including laws that better define payment requirements, prohibit “intimidating” measures by producers, and shift power away from big tech companies and back toward artists. See https://www.otempo.com.br/entretenimento/2024/8/26/com-avanco-do-streaming--artistas-protestam-contra-pagamento-dos (Portuguese). #copyright #copyrightreform #AI #streaming #artistremuneration
Ministry of Culture’s Audiovisual Secretariat (SAV) to Launch Public Streaming Platform: The agency will pay R$3.8 million to license 405 audiovisual works and make them publicly available at no charge. The Public Platform for Access and Dissemination of Brazilian Audiovisual Content on Demand will feature five thematic categories: childhood; youth; diversity; history; and aesthetics of Brazilian cinema. In exchange for a 48-month, non-exclusive exhibition license, the agency will pay R$5,000 for short films, R$10,000 for medium-length films or TV films, and R$20,000 for feature films. See https://www.gov.br/cultura/pt-br/assuntos/noticias/ministerio-da-cultura-investe-r-3-8-milhoes-em-licenciamento-de-obras-audiovisuais-para-plataforma-publica-de-streaming (Portuguese). #copyright #streaming #audiovisualworks
Enforcement
Operation Redirect Blocks Popular Pirated Music Streaming Sites: The Civil Police of Pernambuco, supported by the Ministry of Justice and Public Security’s Ciberlab (of Operation 404 fame) as well as the Civil Police of Bahia and of Mato Grosso, obtained a court order to block eight websites that, over the past year, accumulated a combined total of more than 12 million visits. Analysis by Ciberlab concluded that the sites in question, in addition to illegally pirating music, inserted scripts into the devices of site visitors, placing the integrity of their devices and the data stored thereon at risk. See https://www.diariodepernambuco.com.br/noticia/vidaurbana/2024/08/pirataria-digital-e-alvo-de-operacao-da-policia-civil.html (Portuguese). #IPenforcement #piracy #siteblocking
CNCP Visits Denmark for Discussions on Combatting IP Crimes: CNCP Executive Secretary Andrew Correa highlighted the importance of international cooperation after the visit, noting that some crimes can only be effectively combatted with the participation of multiple stakeholders. The trip included visits to the Danish Patent and Trademark Agency as well as Danish public security and jurisdictional institutions, the customs authority, and the Danish Medicines Agency. According to the Ministry of Justice and Public Security press release regarding the visit, “piracy and crimes against intellectual property, and their connection to other crimes, are areas of growing importance to both Brazil and Denmark.” See https://www.gov.br/mj/pt-br/assuntos/noticias/missao-brasileira-em-copenhague-reforcou-cooperacao-internacional-contra-pirataria (Portuguese). #IPenforcement #piracy #counterfeitmedicines #internationalcooperation
Receita Federal Donates Seized IPTV Boxes: So far in August, the customs agency has donated 805 illicit IPTV boxes worth R$162,000 to the Federal University of Ceará, where students will use them to build computers. Under Brazilian law, commercialization of IPTV boxes that enable access to cable TV or streaming services without permission of the appropriate copyright owner is a crime punishable by 2-4 years in prison and a fine. See https://www.gov.br/receitafederal/pt-br/assuntos/noticias/2024/agosto/receita-federal-destina-805-aparelhos-de-tv-box-apreendidos-para-a-universidade-federal-do-ceara (Portuguese). #IPenforcement #piracy #copyright #IPTV
Receita Federal Seizes Counterfeit Shoes and Clothes: A series of enforcement actions at traffic stops near the Bolivian border, outside of Corumbá, Mato Grosso do Sul, resulted in the seizure of counterfeit shoes destined for the local market and of counterfeit clothing destined for São Paulo. The Federal Highway Police; Ministry of Agriculture, Livestock, and Supply; and the Mato Grosso do Sul Military Police participated in the enforcement efforts. See https://www.gov.br/receitafederal/pt-br/assuntos/noticias/2024/agosto/receita-federal-apreende-aproximadamente-quatro-toneladas-de-mercadoria-em-corumba-ms (Portuguese). #IPenforcement #counterfeits
Other
INPI Publishes Names of New Employees, Schedules Onboarding: The names of INPI’s 120 new employees were published on August 27, and an onboarding ceremony for the new employees will be held on August 30. The patent, trademark, and administrative divisions of INPI will receive 40 new employees each. See https://www.in.gov.br/en/web/dou/-/portaria-de-pessoal/inpi/pr-n-143-de-23-de-agosto-de-2024-580604736 (Portuguese). #IPoffice #hiring #HR
Seventh Edition of Connection Terroirs do Brasil Festival to Be Held in Gramado: The fair will bring together nationally and internationally recognized experts in gastronomy, tourism, businesspeople, and producers, with a focus on highlighting the 51 products at the fair that are protected by geographical indications. According to Sebrae (the Brazilian agency that fosters small- and medium-sized enterprises), products protected by GIs can be sold for a 20%-50% premium, and regions for which GIs are granted can also see an increase in tourism. See https://www.jornaldocomercio.com/economia/2024/08/1168454-produto-pode-valorizar-em-ate-50-no-mercado-se-tiver-indicacao-geografica.html (Portuguese). #GIs
Brazil’s Space Agency Adopts IP Policy: Portaria 1520/2024 sets forth the Brazilian Space Agency’s (AEB) IP Policy, which is based on Brazil’s existing IP laws. Under the policy, AEB’s Information Technology Nucleus will be responsible for analyzing whether any given subject matter is susceptible to IP protection; AEB will own any IP rights generated or obtained based on AEB’s activities or using AEB’s resources; AEB will prioritize non-exclusive licenses over exclusive licenses; and creators and authors of AEB IP will be entitled to receive 1/3 of the economic gains resulting from the commercialization of that IP. See https://www.correiobraziliense.com.br/direito-e-justica/2024/08/6930271-a-politica-de-propriedade-intelectual-da-agencia-espacial-brasileira.html (Portuguese). #IPgenerally #spaceIP #licensing #techtransfer #royalties
Non-IP Topics of Interest
Working Group Elaborating Audiovisual Policy Guidance for Next 10 Years: The working group includes representatives from the Ministries of Culture, Education, Planning, and Finance, as well as from the Superior Council of Cinema and the National Cinema Agency (ANCINE), and is tasked with preparing a new long-term strategic plan, the Plan of Guidelines and Goals (PDM), for the audiovisual sector in Brazil. Public consultations, in hybrid format, will be held in five regions of the country during the month of September to collect suggestions and proposals from civil society. See https://www.gov.br/cultura/pt-br/assuntos/noticias/minc-inicia-debates-para-novo-plano-de-diretrizes-e-metas-do-audiovisual-brasileiro (Portuguese). #audiovisualworks #creativeindustry
Supreme Court to Decide Three Cases Dealing with Internet Liability: In the absence of any regulation of digital platforms by Congress—such as would have been implemented by the failed (for now, at least) Fake News Bill—the Supreme Court is set to hear three cases that will likely lead to judicial regulation of fake news on the Internet. In Extraordinary Appeal (RE) 1037396, the Supreme Court will determine the constitutionality of a law that shields digital platforms and internet providers from liability for user content unless they violate a specific court order to take down the content. In Claim of Non-Compliance with a Fundamental Precept (ADPF) 403, the court will decide whether court orders to block WhatsApp violate the right to freedom of expression and communication and the principle of proportionality. And in RE 1057258, the Court will evaluate the responsibility of sites hosting user-generated content to monitor that content and remove hate speech and fake news. Decisions in these cases are not expected until after the October elections. See https://www.correiobraziliense.com.br/politica/2024/08/6926667-stf-libera-para-julgamento-processos-sobre-o-marco-civil-da-internet.html (Portuguese); https://agenciabrasil.ebc.com.br/justica/noticia/2024-08/stf-pode-julgar-em-novembro-acoes-sobre-retirada-de-conteudo-digital (Portuguese); https://noticias.uol.com.br/colunas/carolina-brigido/2024/08/23/stf-deixa-pra-depois-das-eleicoes-julgamento-que-deve-regular-redes-sociais.htm (Portuguese). #digitalplatforms #fakenews #internetliability
Supreme Court Suspends Decision Obligating Federal Government to Purchase R$15 Million Medication: The STF’s Minister Gilmar Mendes issued the decision, concluding that compelling the government to purchase Roche’s Elevidys (used to treat Duchenne Dystrophy) could lead to a multiplication of similar suits, which would seriously affect the functioning of SUS and prejudice the interests of all Brazilians. Roche, ANVISA, the Public Prosecutor’s Office, and the Union will work together to come up with proposals for moving forward. See https://veja.abril.com.br/coluna/radar/stf-suspende-decisoes-que-obrigavam-uniao-a-pagar-remedio-de-r-15-milhoes/ (Portuguese). #pharmaceuticals
Relatedly, the Chilean Congress this week designated September 7 as Duchenne Muscular Dystrophy Awareness Day. Chile’s public health system is not covered by the public health system, and families of affected children are seeking judicial intervention to obtain the 3.5 billion peso drug Elevidys. See https://www.camara.cl/cms/establecen-dia-de-concientizacion-sobre-distrofia-muscular-de-duchenne/ (Spanish). #pharmaceuticals
Although compulsory licensing has been essentially absent from public discussion in Brazil since the 2021 passage of Law 14,200, which established a procedure for the compulsory licensing of patents during a national emergency or in other specific situations, Uruguay recently announced that it would accept applications for compulsory licenses of a Vertex Pharmaceuticals cystic fibrosis drug after being faced with court orders requiring the government to provide the drug to about 80 patients, and concluding that purchasing the drug would be financially unsustainable. In contrast to the Uruguay situation, the STF’s decision here leaves the door open for a negotiated resolution between Roche and the Brazilian government. Whether the situation in Chile will result in court orders to provide treatment, government purchases of Elevidys, and/or calls for compulsory licensing remains to be seen. #pharmaceuticals #compulsorylicensing
EMS Inaugurates New Factory, Celebrates Push into Innovation: Brazilian pharmaceutical concern EMS inaugurated a new factory in São Paulo state that will produce medicines for the treatment of obesity and diabetes. Speakers at the event highlighted the home-grown technology used in the plant, the importance of research and technology to the health field, and the role of innovation. The president of BNDES, which provides significant financing to EMS, noted that the factory “will reverse the logic of EMS, which will become an exporter, will generate . . . research and innovation.” See https://abifina.org.br/associado-em-foco/ems-inaugura-primeira-fabrica-do-brasil-voltada-a-producao-mundial-de-medicamentos-para-diabetes-e-obesidade/ (Portuguese). #pharmaceuticals #R&D
CHILE
INAPI Partners with WIPO for Train the Trainers Program: Twenty professionals from throughout Chile received training in intellectual property as part of the initiative, and will apply that training as they play an essential role in the implementation of the INAPI Academy. The academy is set to begin operating by the end of 2024, with the objective of providing IP education and development in Chile and throughout the region. See https://www.inapi.cl/sala-de-prensa/detalle-noticia/ompi-e-inapi-concluyen-el-primer-programa-de-formacion-para-formadores-en-propiedad-industrial (Spanish). #IPgenerally #IPeducation #IPoffice
U.S. PUBLIC CONSULTATIONS
Kellis IP is available to assist in drafting or reviewing written comments responsive to 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
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 29-September 1, 2024: Conecta Música e Mercado. Transamérica Expo Center, São Paulo. https://conectamusica.com.br/ (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).
* Indicates events at which I will be speaking.
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.
