The Kellis IP Weekly: Issue 9.2
BRAZIL
Patents
INPI Publishes Latest Patent Performance Results: INPI has updated its online reporting system with the latest data, from August 2024. According to that system, the average patent pendency is 4.4 years counted from the filing date, and 3.2 years counted from the date of the request for examination. Both numbers exceed INPI’s current goals. Accelerated examination applications completed technical examination within 10 months, 1 month slower than targeted. See https://www.gov.br/inpi/pt-br/governanca/planejamento-estrategico/central-de-monitoramento (Portuguese). #IPoffice #patentpendency
INPI Requests Re-filing of Certain Patent Documents: In the September 10 Official Gazette, INPI published a list of patent applications in which certain documents are missing, and notified applicants that they have thirty days to re-file the missing documents together with a petition and a code that will make the filing free. Types of documents missing include pages containing claims, pages containing drawings, entire petitions, etc. See https://revistas.inpi.gov.br/pdf/Comunicados2801.pdf (Portuguese). #patents #IPoffice
Novo Nordisk Warns About Compounding of Ozempic Active Ingredient: Compounding (creating a medication tailored to the needs of an individual patient) is gaining attention after a Brazilian nutritionist and weight loss specialist published a TikTok video about regularly prescribing compounded semaglutide to her patients. Semaglutide is the active ingredient of Ozempic and is protected by a Novo Nordisk patent. The company “does not authorize the supply of semaglutide to any compounding pharmacy or other manufacturer,” and considers compounding of Novo Nordisk medicines and active ingredients to be “irregular.” However, Brazilian law provides a safe harbor against patent infringement for compounding pursuant to a prescription in individual cases (Art. 43, § 3 of Law 9,279 of May 14, 1996). That safe harbor is narrow, according to Novo Nordisk’s Brazilian counsel: the safe harbor applies only when a patient needs—not wants—the compounded medication. Otherwise, the compounding constitutes patent infringement. See https://www1.folha.uol.com.br/equilibrioesaude/2024/09/versoes-manipuladas-de-ozempic-e-mounjaro-sao-ofertadas-nas-redes-sociais-pratica-e-contraindicada.shtml (Portuguese). #patents #pharmaceuticals #IPinfringement
Bayer Suffers Another Setback in Court: The STF’s decision in ADI 5529, which found Brazil’s 10-year minimum patent guarantee to be unconstitutional, stated that the decision would be applied retroactively to patents whose terms had been challenged in court prior to April 7, 2021. Based on that statement, the terms of three Bayer patents covering the Intacta RR2 Pro technology must be adjusted, per a Mato Grosso court decision that applies a previous STF decision on the matter. Following the recalculation, two of the patents in question are expired (as of 2018 and 2020), while a third will now expire in 2026. Whether or not Bayer can continue to charge royalties, and whether or not Bayer must refund royalties already paid to it since the newly calculated expiration dates of the two patents in question, remains to be decided. In a statement, Bayer noted that it has obtained additional patents regarding the technology that will not expire until 2028. See https://agfeed.com.br/negocios/aprosoja-mt-x-bayer-agricultores-vencem-mais-um-round-na-disputa-dos-royalties-da-soja/# (Portuguese); https://revistacultivar.com/news/decision-determines-deposit-of-royalties-on-intact-soybeans-rr2-pro (English); https://www.conjur.com.br/2024-mar-12/stf-mantem-decisao-que-obriga-bayer-a-depositar-r-13-bi-por-cobranca-de-patente/ (Portuguese). #patents #ADI5529 #royalties #IPlitigation
Trademarks
INPI Publishes Latest Trademark Performance Results: INPI has updated its online reporting system with the latest data, from August 2024. Pendency for applications without opposition was 16.9 months (versus a goal of 18 months) and pendency for opposed applications was 24.6 months (versus a goal of 27 months). See https://www.gov.br/inpi/pt-br/governanca/planejamento-estrategico/central-de-monitoramento (Portuguese). #IPoffice #trademarkpendency
Embattled Singer Scores Trademark Win: Sertanejo singer Gusttavo Lima—currently under investigation for money laundering and illegal gambling—successfully challenged the validity of the mark EMBAIXADOR (ambassador, in English), the nickname by which he has been known since 2016. The mark had been registered to Reconvinda, which also used some of Lima’s characteristic expressions in advertising its products—a fact that Mr. Lima argued demonstrated the company’s bad faith in protecting the EMBAIXADOR mark. The decision clears the way for Mr. Lima to secure protection of the mark himself, despite his application for registration of that mark having been denied in 2017. See https://veja.abril.com.br/coluna/veja-gente/a-vitoria-de-gusttavo-lima-na-justica-em-meio-a-mare-de-azar (Portuguese). #trademarks #IPlitigation
Copyright
Senate AI Committee Holds Hearing: A September 4 hearing by the Temporary Committee on Artificial Intelligence (CTIA), featured calls for reforming the risk classification system presently in the bill, which speakers warned could discourage innovation, competitiveness, and development. Senator Marcos Pontes (PL-SP), co-chair of the hearing, reflected on the need to ensure the bill is not obsolete the moment it becomes law due to the rapidly changing AI landscape. Luis Fernando Prado, a lawyer and visiting professor at the Faculty of Law of Vitória, opined that the bill is on track to be one of the most restrictive AI laws in the world, and suggested more balance on the copyright front. Mr. Prado proposed allowing the use of legally available works for computational analysis, while respecting the conditions that preserve the rights of copyright holders. See https://www12.senado.leg.br/noticias/materias/2024/09/05/especialistas-defendem-mudancas-no-projeto-que-regulamenta-ia (Portuguese). #AI #copyright #publicpolicy
Politician Sues Party Colleague for Copyright Infringement: A councilwoman from Belo Horizonte, Marcela Trópia (Novo), sued fellow Novo party member Danilo Rocha for plagiarism and copyright infringement, alleging improper use of her own policy proposals. According to the complaint, Ms. Trópia developed the proposals with her team with an investment of significant time, intellectual effort, and money—such that the resulting proposals reflect her creativity and uniqueness and therefore qualify for copyright protection. The complaint also accused Mr. Rocha of deliberately and improperly copying the proposals, while changing only superficial aspects such as layout and wording. See https://www.otempo.com.br/eleicoes/2024/vereadores/2024/9/6/vereadora-de-bh-entra-com-representacao-contra-colega-de-partido (Portuguese). #copyright #IPlitigation #IPinfringement #politics #plagiarism
STJ Increases Damages in Copyright Infringement Case: After a lower court issued a ruling finding Brazilian clothing retailer Reserva liable for copyright infringement for using the lyrics of (deceased) singer Tim Maia’s music on t-shirts, the STJ has now ordered Reserva to pay Mr. Maia’s estate not just R$50,000 in moral damages plus its profits from selling the shirts in question, but also the amount that Reserva would have paid to purchase a license, had it done so. While these sums remain to be calculated, the total damages cannot exceed R$600,000, the amount originally requested by the plaintiff. See https://www1.folha.uol.com.br/colunas/monicabergamo/2024/09/stj-aumenta-valor-de-indenizacao-que-reserva-tera-de-pagar-por-camisetas-com-frases-de-tim-maia.shtml (Portuguese). #copyright #IPinfringement #IPlitigation
Enforcement
ANCINE Draws More Criticism for Failing to Act Against Piracy: In late August, the National Film Agency responded to questions about anti-piracy enforcement from website Tela Viva by explaining that, in the absence of any official deadline for compliance with Law 14,815/2024 (under which ANCINE is responsible for the determining whether to suspend or stop the unauthorized use of copyrighted Brazilian or foreign works), ANCINE will propose regulations on the topic in the 2025-2026 biennium. In response, on September 5, the Brazilian Pay TV Association (ABTA) issued a note calling out ANCINE for unnecessarily delaying action in the fight against piracy. The note highlights the threat the piracy poses to businesses, jobs, and copyright; the urgency of addressing the piracy problem; ANCINE’s past successes in the fight against piracy; and the immediate effect of the law passed in January, which was broadly supported at the national and international levels. See https://noticiasdatv.uol.com.br/noticia/daniel-castro/tv-por-assinatura-sobe-o-tom-e-critica-ancine-por-omissao-contra-pirataria-124987 (Portuguese); https://telaviva.com.br/30/08/2024/ancine-aponta-que-elaboracao-de-plano-de-combate-a-pirataria-deve-constar-na-agenda-regulatoria-de-2025-26/ (Portuguese). #IPenforcement #piracy #copyright #arelawsjustasuggestion
Other
ENAPID Kicks Off with Focus on National IP Strategy, INPI President Remarks: Graziela Zucoloto, a researcher at the Institute of Applied Economic Research, gave the keynote address at the beginning of the Academic Meeting on IP, Innovation, and Development (ENAPID). The event, now in its 16th year, is hosted by INPI’s Academy of IP, Innovation, and Development and provides a forum for sharing academic research regarding intellectual property. Ms. Zucoloto noted that prior to development of the national strategy, IP’s role in Brazilian public policy was relatively insignificant and focused on patents. Following development of the strategy, however—a process that involved more than 200 stakeholders and adopted a long-term approach with periodic reviews, while seeking to balance the needs of IP rights holders with those of society generally—the topic has grown in importance. Meanwhile, in his opening remarks, INPI President Júlio César Moreira highlighted the Academy’s role in evaluating Brazil’s potential adherence to the Lisbon Agreement on Geographical Indications and the low use of industrial design protection in the country. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/aula-magna-do-enapid-discute-pi-nas-politicas-publicas (Portuguese). #IPstrategy #publicpolicy #LisbonAgreement #GIs #industrialdesigns
INPI, Sindusfarma Publish Handbook on IP: The handbook, which discusses trademarks, patents, and technology transfer, highlights the importance of IP for the pharmaceutical industry: “[IP] makes possible the large investments in research and development, intellectual capital and technology, among other factors, that characterize the process of innovation in health . . . . No country achieves socioeconomic development without respecting patents, trademarks, and the knowledge of scientists. . . . In Brazil it will not be different. No path exists for development of the country that does not pass through stimulating the pharmaceutical industry and the innovation ecosystem.” See https://sindusfarma.org.br/uploads/files/229d-gerson-almeida/Publicacoes_PPTs/Cartilha_Propriedade_Intelectual___Set24.pdf (Portuguese); https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-participa-da-cupula-brasileira-de-inovacao-em-saude (Portuguese). #pharmaceuticals #publicpolicy #innovation
Temporary AI Committee Gets 60-day Extension: For the fourth time, the Senate plenary has extended the mandate of the Temporary AI Committee, this time at the request of Senator Marcos Pontes (PL-SP), who cited the complexity of the topic and the difficulty in holding needed discussions with committee members due to their involvement in political campaigns for the October elections. See https://www12.senado.leg.br/noticias/materias/2024/09/11/comissao-sobre-inteligencia-artificial-ganha-60-dias-para-concluir-trabalhos (Portuguese). #AI
Paraná State Program Jumpstarts Research-to-Market Tech Transfer Pipeline: The Market-Focused Intellectual Property (Prime) program incentivizes university researchers to focus efforts on solving market problems, with the goal of launching marketable products. During a first program phase, participants in the program receive training in a variety of topics relevant to entrepreneurship, including funding, partnerships, and intellectual property. A second phase of the program, open to participants who have at least filed a patent application with INPI and demonstrated market potential, leads to the development of an initial business plan. Finally, ten finalists are selected to receive an investment of R$200,000. The project, launched in 2021, has seen some success in the agricultural, veterinary medicine, and gastronomy fields. See https://www.fappr.pr.gov.br/Noticia/Das-universidades-ao-mercado-novos-produtos-nascem-de-pesquisas-apoiadas-pelo-Estado (Portuguese). #techtransfer #IPeducation
The federal government of Brazil is anxious to improve tech transfer throughout the country, recognizing that Brazilian universities generate an abundance of academic research, but little of that research is ultimately commercialized. The experience of Paraná may provide a model for the country as a whole as it seeks higher returns from its academic resources.
Heinz-Hemmer Industrial Design Safe: The 3rd Federal Court of Blumenau rejected an attempt by a packaging supplier to invalidate the industrial design registration of its customer, Heinz-Hemmer, that protects the shape of the condiments company’s ketchup and mustard bottles. The plaintiff asserted that it created the design in question during the course of its contractual relationship with Heinz-Hemmer, and the court relied upon this admission in concluding that even if the plaintiff did in fact create the design, Heinz-Hemmer is the rightful owner thereof. See https://www.trf4.jus.br/trf4/controlador.php?acao=noticia_visualizar&id_noticia=28507 (Portuguese). #industrialdesigns #IPinfringement #IPlitigation
Non-IP Topics of Interest
EU-Mercosur Agreement Negotiations Continue: Negotiators representing the Mercosur countries and the EU met in Brasília last week to discuss the long-delayed agreement, with some items being successfully closed, and others still being negotiated. The latter group includes issues regarding the provisions on government purchases, as well as how to resolve the two sides’ competing proposals regarding environmental requirements. With Argentina taking a back seat under the Milei administration, Brazil is largely driving the negotiations process from the Mercosur side. See https://www.parlamentomercosur.org/innovaportal/v/22531/1/parlasur/un-nuevo-episodio-de-la-saga-argentina-en-el-mercosur.html (Spanish). #EUMercosurAgreement #tradeagreements
Amazon Biobusiness Center to Host Bioeconomy Innovation Hub in Manaus: The hub, which will be physically located in a repurposed hotel, will bring together private entrepreneurs, researches, and biodiversity experts with the goal of producing more technology, more sustainable products, more income, and more job opportunities in the region and in Brazil. Grants and mentoring provided by Sebrae will contribute to the success of the hub, which aims to encourage the development of products and business based on the biodiversity of the Amazon. Operations at the new hub are expected to commence in the first half of 2025. See https://agenciasebrae.com.br/inovacao-e-tecnologia/centro-de-bionegocios-da-amazonia-vai-abrigar-o-primeiro-hub-de-inovacao-em-bioeconomia-da-regiao-norte/ (Portuguese). #biodiversity #entrepreneurship #startups
Brazilian Semiconductor Manufacturers to Invest Billions in Growth: With an eye toward joining high technology global supply chains, Abisemi—the association for the semiconductor industry—announced R$24.8 billion in private investment that will go toward research and development, increasing productive capacity, and factory expansion. At a ceremony celebrating the announcement, President Lula signed a law that provides for incentives of up to R$7 billion per year for the chip, solar panel, and electronics industries. Both developments further Brazil’s goals under the New Industry Brazil project’s Mission 4, which aims to advance Brazilian industry in the areas of Internet of Things, artificial intelligence, and big data. See https://www.gov.br/mdic/pt-br/assuntos/noticias/2024/setembro/nova-lei-alavanca-investimento-privado-de-r-24-8-bi-para-exportacao-de-chips-201cmade-in-brazil201d (Portuguese). #investment #R&D #semiconductors
Administration Will Introduce Legislation to Tax Big Techs This Year: After signing an international agreement to do so, Brazil intends to introduce legislation this year to tax big techs. Brazilian Finance Minister Fernando Haddad noted that only the U.S. has not signed the agreement in question, and warned that Brazil needs to move forward with the measure to avoid being harmed by the lack of regulation. See https://agenciabrasil.ebc.com.br/economia/noticia/2024-09/apenas-os-eua-nao-firmaram-acordo-de-taxacao-de-big-techs-diz-haddad (Portuguese). #tax #publicpolicy
ARGENTINA
INPI Co-hosts Seminar for Tech Transfer Offices: In collaboration with WIPO, INPI held a national seminar for university Technology and Innovation Advisory Centers to discuss the management and commercialization of intellectual property. Topics addressed during the seminar include patent drafting, license negotiation, transfer of research results, and negotiation. See https://www.argentina.gob.ar/noticias/seminario-nacional-de-la-ompi (Spanish). #IPoffice #techtransfer
CHILE
Pending AI Bill Raises IP Concerns: Chile’s proposed AI bill could be problematic for copyright holders and software developers. The bill allows the use of large datasets for data mining as long as there is no direct exploitation of copyrighted material—thus taking from copyright holders the ability to control the use of their works. Additionally, outputs from generative AI models trained using copyrighted material (as permitted by the AI bill, provided the data is used for non-commercial purposes), if not sufficiently different from a work used to train the model, could constitute copyright infringement. As for software developers, the Chilean AI bill requires disclosure of the datasets and methodologies used to train AI models—information that may be held as a trade secret and which, if disclosed, could harm the developers’ ability to compete. See https://intellectual-property-helpdesk.ec.europa.eu/news-events/news/genai-balancing-innovation-and-copyrights-challenges-chiles-ai-bill-2024-09-09_en (English). #AI #copyright #tradesecrets
PARAGUAY
DINAPI Holds Launch Event for Mediation Service: The service, operating under a pilot program with the support of the WIPO Arbitration and Mediation Center, has a set of rules, trained mediators, and teleconferencing technology that will allow access to mediation from throughout Paraguay. See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=462 (Spanish). #IPoffice #mediation #ADR
DINAPI, CONACOM Sign Cooperation Agreement: The agreement between DINAPI and the National Competition Commission foresees joint training activities, information exchange, and cooperation of other items deemed to be of mutual interest. The agreement also provides for DINAPI’s participation in an October 2 World Competition Day event intended to raise awareness about the importance of fair competition. See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=463 (Spanish). #IPoffice #competition
URUGUAY
Uruguay Prepares to Accept PCT Applications: In a post on LinkedIn, Uruguay’s Ministry of Industry, Energy, and Mining (MIEM) announced that “The National Directorate of Industrial Property (DNPI) of the MIEM informs users of the system that the filing of the Patent Cooperation Treaty (PCT) will become effective on October 7, and after 3 months, it will be operational, making Uruguay an eligible jurisdiction for the entry and receipt of PCT applications.” According to the post, an announcement will soon be made regarding training sessions to facilitate effective implementation of the treaty. See https://www.linkedin.com/posts/ministerio-de-industria-energ-a-y-miner-a_pct-uruguay-patentes-activity-7239724393617063938-ql86?utm_source=share&utm_medium=member_desktop (Spanish). #PCT #patents
U.S. PUBLIC CONSULTATIONS
Kellis IP is available to assist in drafting or reviewing written comments responsive to public consultations.
USTR - Request for Comments on Significant Foreign Trade Barriers for the 2025 National Trade Estimate Report: USTR prepares the NTE Report annually, addressing significant foreign barriers to U.S. exports of goods and services, including intellectual property. IP is one of 13 specified categories in which USTR seeks comments, and within South America Brazil, Argentina, Bolivia, Chile, Ecuador, Paraguay, Peru, and Uruguay are all identified as countries of interest for comments. Written comments due October 17, 2024. See https://www.govinfo.gov/content/pkg/FR-2024-09-03/pdf/2024-19694.pdf (English). #IPpolicy #tradebarriers #publicconsultations
2024 Request for Comments on Review of Notorious Markets for Counterfeiting and Piracy : 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 #publicconsultations #counterfeits #piracy
*Closes Soon* 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 #publiconsultations
UPCOMING IP EVENTS
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).
*November 29, 2024: VIII Meeting on Development of Agroindustrial Processes. Online. Sponsored by the University of Uberaba (Uniube).
*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.
