The Kellis IP Weekly: Issue 9.3
BRAZIL
Patents
Speculation About Changes to PPH Program: Following Brazil’s entrance into the Global PPH program, announced in July 2024, INPI is expected to issue regulations governing participation in that program prior to the end of the year. Meanwhile, an opinion piece in the publication Consultor Jurídico notes an “expectation” that those regulations will remove the current rule that each applicant may only submit one PPH request per week, and will also eliminate an existing rule that applications are only eligible for the PPH program if the original priority application was filed with INPI or a PPH partner institute. See https://www.conjur.com.br/2024-set-13/mudancas-no-tramite-de-pph-esperadas-para-o-brasil/ (Portuguese). #patents #PPH
While the removal of limitations on participation in Brazil’s PPH program is, generally speaking, a laudable goal, lifting the restriction of one PPH petition per user per week is likely to negatively affect smaller players. Even with that restriction—which acts not only as a timing mechanism but also as a cap on the total number of PPH petitions any one applicant can file per year—the 800 application-per-year cap for the PPH program is already being reached mid-year. Lifting the restriction without simultaneously lifting the cap (or at least imposing a per-applicant cap) would allow those with large numbers of pending applications to race to submit PPH petitions, leading to the overall cap being reached more quickly and reducing opportunities for entities with fewer applications to utilize the accelerated examination program.
Changes to Law of Cultivars Debated: The various committees of the National Confederation of Agriculture and Livestock (CNA) met last week to discuss potential amendments to the Cultivar Protection Law, Law No. 9,456/1997. Proposed revisions to the legislation would be directed at ensuring technology access, maintaining a robust market with healthy competition, and breeder remuneration. See https://cnabrasil.org.br/noticias/comissoes-da-cna-debatem-lei-de-protecao-de-cultivares (Portuguese). #cultivars #IPreform
INPI Issues Revised Rules for Updating Patent Ownership Information: The new rules, published in Portaria INPI/DIRPA n. 20 and set to go into effect 30 days after the September 17, 2024 publication of the same, require electronic filing of any updated information and accompanying documents, together with payment of a fee. Specific documentation requirements are set forth for different types of updates, including ownership transfers, name changes, address changes, and recordals of liens or encumbrances. See https://revistas.inpi.gov.br/pdf/Comunicados2802.pdf (Portuguese). #patents #patentprocedure #IPoffice
INPI Publishes 7th Edition of Administrative Appellate Decisions Regarding Patents: The publication includes 645 decisions generated by INPI’s administrative judges for patent appeals during 2023. By making these decisions readily accessible, INPI hopes to contribute to greater understanding of how examination requirements are applied. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-divulga-7a-edicao-da-coletanea-de-decisoes-em-2a-instancia-de-patentes (Portuguese). #patentappeals #IPoffice
Trademarks
New Bill Would Criminalize Trademark Squatting: Anyone who registers a trademark without developing related economic activity (i.e., with intent to sell the trademark registration to another entity in the future), could be penalized by 1-3 months in prison or a fine if the pending legislation, PL 2496/24, is passed into law. Deputy Helder Salomão (PT-ES), the author of the bill, stated that the objective is to allow those harmed by such activity to take legal action to protect their rights. See https://www.camara.leg.br/noticias/1085647-projeto-torna-crime-o-registro-de-marca-com-o-unico-objetivo-de-vende-la (Portuguese). #trademarks #trademarksquatting
INTA Leadership Meets in Rio: The Board of Directors of the International Trademark Association convened in Rio this week, where they met with INPI leadership to discuss INPI’s 2023-2026 strategic plan and legislative updates to trademark law. The board also met with the STF, MDIC, the Ministry of Foreign Affairs, the Interministerial Group on Intellectual Property, and Receita Federal. During remarks at the beginning of the trip, INTA CEO Etienne Sanz de Acedo praised Brazil’s commitment to IP, noting that the country is fostering an environment conducive to innovation, growth, and social and economic well-being. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-apresenta-seu-plano-estrategico-para-associacao-internacional-de-marcas (Portuguese); https://www.conjur.com.br/2024-set-18/brasil-tem-compromisso-com-pi-e-e-destaque-regional-diz-ceo-da-inta/ (Portuguese). #trademarks #legislation #IPpolicy
INPI – Dialogue with Trademark Users: Brazil’s INPI has launched a survey intended to help the agency better understand the necessities and expectations of users of the trademark system. The survey, which is only available in Portuguese, asks participants, for example, to rank items such as quality of examination, speed of examination, judicial certainty, access to information, etc. in order of importance; to list 5 themes about which the participant would like to receive more information or speak with INPI; etc. In addition to the written survey (which does not have a published closing date), INPI will hold a meeting with trademark users in Rio de Janeiro on September 25th. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-realiza-pesquisa-com-interessados-no-sistema-de-marcas (Portuguese). #IPpolicy #trademarks
Copyright
Brazilian, Chinese Representatives Discuss AI and Copyright: Cauê Oliveira Fanha, the Director of Regulation of Author’s Rights from the Ministry of Culture’s Secretariat of Author’s and Intellectual Rights, represented Brazil at the 2024 International Copyright Forum, held in China from September 9-10. Speaking on a panel about technology and copyright, Mr. Fanha highlighted the need for legislation that guarantees transparency and rightsholder remuneration for the use of copyrighted works when training AI systems. Mr. Fanha also met with the Vice Director General of China’s National Copyright Administration to discuss areas of agreement regarding the development of copyright at an international level, within the scope of WIPO, as well as issues surrounding copyright in a digital environment. See https://www.gov.br/cultura/pt-br/assuntos/noticias/na-china-minc-debate-o-impacto-do-desenvolvimento-das-tecnologias-no-crescimento-dos-direitos-autorais (Portuguese). #copyright #AI
ECAD Signs Agreement with Rio Brazilian Hotel Industry Association: The agreement allows hotels in Rio a discount of up to 60% on debts to ECAD as well as a discount on the monthly fee for hotels that participate in the Simples system, provided the hotel is up to date with its copyright payments and belongs to the industry association. See https://www4.ecad.org.br/noticias/abih-rj-e-ecad-assim-acordo-com-beneficios-para-hoteis-fluminenses/ (Portuguese). #copyright #CMOs
Enforcement
Operation 404’s Seventh Phase Leads to Arrests in Brazil, Argentina: The latest iteration of Operation 404, the widely praised public-private anti-piracy partnership, resulted in the takedown of 675 websites and 14 streaming apps, which together had received over 12 million visitors during the past year. Additionally, five arrests were made in Brazil and three in Argentina, while thirty search and seizure warrants were executed. See https://www.gov.br/mj/pt-br/assuntos/noticias/operacao-internacional-contra-pirataria-tira-do-ar-675-sites-e-14-aplicativos-de-streaming (Portuguese); https://g1.globo.com/politica/noticia/2024/09/19/operacao-404-pirataria-nova-fase.ghtml (Portuguese). #piracy #copyright #Operation404
The fact that three arrests were made in Argentina as part of Operation 404 represents a huge win for the pro-copyright, anti-piracy community, and hopefully portends a broader shift in the Argentine government’s approach to IP infringement in the country. On the other hand, the absence of U.S. institutions from the list of those participating represents, at best, a missed opportunity, particularly given that the Department of Justice was a key partner in Operation 404’s earlier iterations.
SDAI Meets with ANCINE to Discuss Anti-Piracy Implementing Regulations: On September 17, representatives of the Ministry of Culture, the Secretariat of Author’s and Intellectual Rights (SDAI), the Ministry of Justice and Public Security, and the Secretariat of Social Communication of the Presidency of the Republic met to discuss the development of implementing regulations for Article 3 of Law 14,815/2024, which gives ANCINE the responsibility “to determine the suspension and cessation of unauthorized use of protected Brazilian or foreign works.” The meeting is the second between SDAI and ANCINE in three weeks: on August 27th, the heads of both organizations met to discuss public policy for copyright protection. See https://eagendas.cgu.gov.br/info-compromisso/agenda/18800/compromisso/432478 (Portuguese); https://eagendas.cgu.gov.br/info-compromisso/agenda/18800/compromisso/417564 (Portuguese). #copyright #piracy
ANATEL Partners with Community Hackathon Brazil for Contest to Block Illegal TV Boxes: While rightsholders wait for ANCINE to begin fulfilling its legal anti-piracy mandate, ANATEL continues to press ahead, most recently by partnering with Community Hackathon Brazil to hold a hackathon contest focused on identifying novel methods of blocking illegal IPTV boxes. The top three finishers at the Sept. 28-29 contest will receive monetary prizes ranging from R$7,000 for first place to R$2,000 for third place. See https://veja.abril.com.br/economia/anatel-anuncia-concurso-para-criacao-de-ferramentas-de-bloqueio-de-tv-boxes-ilegais (Portuguese). #IPenforcement #piracy #copyright
Rio Civil Police’s IP Crimes Unit Seizes Counterfeit Clothes from West Zone Store: The Department for the Repression of Crimes Against Intellectual Property (DRCPIM) made the seizure at a store in Santa Cruz, in an area controlled by militias. The “hundreds” of seized shirts and shoes bore the marks of a variety of famous brands. According to DRCPIM, the owner of the store will be charged with IP crimes. After undergoing expert analysis, the products will be destroyed. See https://www.diariocarioca.com/rio-de-janeiro/video-policia-apreende-roupas-falsificadas-em-operacao-na-zona-oeste/ (Portuguese). #IPenforcement #counterfeits
Other
Technology Transfer Contract Milestone: The State University of Campinas, Unicamp, has 212 active technology transfer contracts – a record for the university. The contracts are managed by the university’s technology transfer office, Inova Unicamp, which manages Unicamp’s portfolio of 1,295 patents. See https://www.inova.unicamp.br/2024/09/cbn-campinas-unicamp-atinge-recorde-de-contratos-de-transferencias-de-tecnologias/ (Portuguese). #techtransfer #patents #licensing
INPI Releases 2023 Statistical Yearbook with IP and Gender Supplement: The yearbook holds a wealth of information about various aspects of the Brazilian IP landscape. After falling from 2013 to 2018, patent applications stabilized from 2018-2022 and rose in 2023. Trademark filings have seen a meteoric rise since 2012, with the largest jump in 2020. Industrial design filings have generally stayed in the 6,000 to 7,000 registrations per year range, while contract recordals have fallen by half since 2012 and computer program filings have almost tripled during the same period. The U.S. is the leader by far among foreign countries seeking patent, trademark, and design protection in Brazil, but China and Spain both outpace U.S. utility model filings in Brazil. In terms of industrial interest in IP, the extractive industries (mining and oil) top a list of the top ten industries for R&D expenditures in Brazil, followed by motor vehicle manufacturing and manufacturing of petroleum products and biofuls. When R&D expenditures are considered as a percentage of revenue, however, the pharmaceutical industry tops the list, with extractive industries in second place and manufacturing of information technology equipment, electronic products and optics in third. See https://www.gov.br/inpi/pt-br/inpi-data/relatorios/Anuario-Estatistico-de-Propriedade-Industrial (Portuguese). #IPlandscape #IPstatistics #patents #trademarks #industrialdesigns
INPI Shares Brazil Innovation and Development Index with IP Office Economists: At the 19th European Conference on IP, sponsored by WIPO and attended by the national IP offices of the U.S., France, Japan, the United Kingdom, and others, INPI presented the IBID and participated in discussions with other economists regarding IP-focused economic research. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-apresenta-o-ibid-durante-conferencia-europeia-de-pi (Portuguese). #IPoffice #IPeconomics #IBID
INPI Partners with EUIPO, Others for IP and Sustainable Commerce Event: Through the AL-INVEST Verde project, INPI, EUIPO, the National Service of Industrial Learning (SENAI), and the Federation of Industries of São Paulo State (FIESP) will host “Green Gateway: the use of IP rights to promote sustainable commerce between Brazil and the European Union.” The two-day event runs from September 26-27 and will include discussions on trademarks and industrial designs. See https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/projeto-al-invest-verde-dpi-realiza-seminarios-sobre-marca-e-di (Portuguese). #trademarks #industrialdesigns #internationalcooperation
WIPO, Ministry of Culture Publish Report on IP for Quilombola Women Initiative: The report describes the various aspects of the initiative, formally titled “Intellectual Property for Quilombola Women: Promoting Cultural Patrimony and Economic Empowerment.” Those aspects include consulting with quilombola communities, mapping cultural potential and evaluating necessities, and capacity-building. The report also identifies ways in which IP can help to preserve the cultural heritage of these communities. See https://www.gov.br/cultura/pt-br/assuntos/noticias/minc-disponibiliza-relatorio-de-acoes-sobre-propriedade-intelectual-para-mulheres-quilombolas (Portuguese). #inclusiveIP #IPforall
Brazil, U.S. Hold Commercial Dialogue: The 22nd Plenary Session of the Brazil – U.S. Commercial Dialogue is being held today at USPTO headquarters in Alexandria, Virginia. The dialogue, which aims to build solutions to improve trade between the two countries, includes an Intellectual Property Working Group. See https://www.gov.br/mdic/pt-br/assuntos/noticias/2024/setembro/brasil-e-eua-debatem-melhoria-regulatoria-facilitacao-do-comercio-e-parcerias-em-alta-tecnologia (Portuguese). #IPpolicy #internationalcooperation
Non-IP Topics of Interest
BNDES Extends R$5.9 Billion in Funding to Drive Innovation: Most of the money, which Brazil’s National Bank of Economic and Social Development (BNDES) made available from January to August 2024, went to the pharmaceutical sector (R$1.39 billion) and the agricultural sector (R$492 million), with lesser amounts going to the biofuels, electric cars, and mobility sectors, among others. Large companies are the primary beneficiaries of the funding, a majority of which is in the form of low-interest-rate loans: for example, pharmaceutical companies EMS and Eurofarma received R$500 million each, while Aché received R$390 million, and in the manufacturing sector, turbine and electric motor producer Weg received R$176.8 million. The funding aligns with President Lula’s New Industry Brazil reindustrialization plan, which is intended to reinvigorate Brazilian industry and reduce the country’s dependence on foreign goods. See https://www.estadao.com.br/economia/bndes-valor-recorde-inovacao-credito-subsidiado-farmaceuticas/ (Portuguese). #innovation #funding #development
Musk, X Find Way to Evade Brazil’s Blockade: After withdrawing R$18.4 million reais from seized X and Starlink accounts last week to cover fines previously imposed on X, STF Minister Alexandre de Moraes ordered the release of the accounts on the basis that there was no longer any need to keep them. Now, however, X has stopped using the IP addresses that were blocked in Brazil and switched to using Cloudflare servers to host the site—meaning that X is not only using new, unblocked IP addresses (a switch that immediately restored Brazilians’ access to the platform), but also that X now shares those IP addresses with banks and other important institutions. As a result, if the STF orders X’s current IP addresses to be blocked, access to sites unaffiliated with X will also be blocked. See https://www.cnbc.com/2024/09/13/brazil-supreme-court-unfreezes-assets-of-elon-musks-starlink-x.html (English); https://agenciabrasil.ebc.com.br/justica/noticia/2024-09/operadoras-dizem-que-atualizacao-do-x-permitiu-acesso-plataforma (Portuguese).
I doubt we’ve seen the end of the battle between the STF and X. While I expect that X removed any money remaining its accounts (if any) following the unfreezing of those accounts, Starlink maintains operations in Brazil and is unlikely to have done the same, meaning that any remaining Starlink assets are arguably at risk of further STF seizure. Though not a Musk company, Cloudflare has a Brazilian presence as well, and could—in theory at least—be ordered to restrict access to X in Brazil or face some penalty. In short, the STF is not without options as it determines its next move.
It's worth mentioning, however, that I don’t see this fight between the STF (or, perhaps more accurately, the Brazilian government) and X as having negative consequences for U.S. companies in most industry sectors. The Brazilian government blames big tech and social media for facilitating the January 8 riots in Brasília and for the spate of school killings that took place in subsequent months. Additionally, the Brazilian government was furious when those same companies leveraged their extensive reach within Brazilian society to help defeat the Fake News Bill, which itself was a direct response to the aforementioned events. Moreover, the STF explicitly warned that if the National Congress failed to regulate tech platforms and fake news, the judiciary would do so. We’re now seeing that happen, with very public effects. But I see no reason to think that companies outside of big tech and social media will be implicated in this battle—unless, of course, they choose to get involved.
Update: As expected, within 24 hours of X’s circumvention of Brazil’s technical blocking measures, Minister Moraes imposed a fine of R$5 million per day on X, payable by Starlink if X fails to pay. For its part, X asserted that the switch to Cloudflare servers was necessary because Brazil’s blockade prevented X from accessing infrastructure used by X to serve all of Latin America. See https://g1.globo.com/politica/noticia/2024/09/19/moraes-multa-x-starlink-bloqueio-brasil.ghtml (Portuguese).
ARGENTINA
INPI Participates in Third Belt and Road High-Level Conference on Intellectual Property: At the conference, China’s Vice Premier Ding Zuexiang highlighted the need for cooperation in the efficient use of patents, trademarks, geographical indications, and copyright, and emphasized the potential for IP to strengthen innovative economies. The event was co-organized by WIPO, the China National IP Administration, the China National Copyright Administration, China’s Ministry of Commerce, and the People’s Government of Beijing Municipality. See https://www.argentina.gob.ar/noticias/el-instituto-nacional-de-la-propiedad-industrial-en-la-tercera-conferencia-de-alto-nivel-de (Spanish). #IPoffice #beltandroad #innovation
CHILE
INAPI, DNPI Discuss PCT as Tool for Innovation Development: In advance of Uruguay’s DNPI implementing the Patent Cooperation Treaty, representatives from the agency visited with INAPI officials to discuss how the PCT facilitates the protection of inventions internationally, saving applicants time, work, and money. Chile joined the PCT 15 years ago, established an International Search and Preliminary Examination Authority 10 years ago, and actively promotes use of the treaty. See https://www.inapi.cl/sala-de-prensa/detalle-noticia/inapi-y-uruguay-refuerzan-su-cooperacipn-para-fomentar-el-uso-del-tratado-de-cooperacion-en-materia-de-patentes-pct (Spanish). #PCT #internationalcooperation
PARAGUAY
Foreign Press Highlight Difficult IP Environment: A New York Times article republished in the Folha de São Paulo paper describes a Paraguayan company, Mickey, whose logo is essentially identical to that of Disney’s Mickey Mouse, and that prevailed over the much larger company in Paraguayan court when Disney challenged Mickey’s right to use the logo. The article also highlights Paraguayan factories that produce counterfeit sportswear and other clothing, a “Harvard University” in notorious market/city Ciudad del Este that issues fake medical degrees, and the fact that Paraguay earned only 1.7 points out of 10 on a Property Rights Alliance survey of copyright protection around the world. See https://www1.folha.uol.com.br/mercado/2024/09/sucesso-nacional-mickey-do-paraguai-ja-venceu-disney-na-justica-para-usar-nome-e-personagem.shtml (Portuguese) #trademarks #copyright #counterfeits #IPinfringement
U.S., Paraguay Participate in Third Bilateral TIFA Meeting: The Third Meeting of the Trade and Investment Council of the Trade and Investment Framework Agreement between the U.S. and Paraguay took place in Washington D.C. from Sept. 9-11. During the event, DINAPI’s acting director general of enforcement and Patricia Báez, DINAPI’s head of international cooperation, met with Matthew Lamberti, senior advisor of the Computer Crimes and Intellectual Property Section of the U.S. Department of Justice, to discuss DINAPI’s IP enforcement efforts. Also during the event, USPTO, USTR, and DOJ representatives offered DINAPI technical assistance and other support to help ensure the agency’s continued progress. See https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=465 (Spanish); https://www.dinapi.gov.py/portal/v3/noticias/detalle-noticia?idNoticia=466 (Spanish). #IPenforcement #internationalcooperation
PERU
Legislative Decree No. 1649 Enhances Anti-Piracy Legislation: The decree, published on September 13, criminalizes the mere filming or recording of a film from movie theaters, regardless of whether the resulting recording will be used for commercial purposes. The requirement to prove commercial intent that previously existed in the law frustrated efforts to bring those guilty of camcording to justice, even though Peru’s criminal code makes such behavior punishable by no less than 4 and no more than 8 years in prison. See https://www.gob.pe/institucion/indecopi/noticias/1021575-indecopi-tolerancia-cero-a-la-pirateria (Spanish). #copyright #piracy #legislation
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
USPTO - Request for Comments on 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence: USPTO published the updated examination guidance on July 17, 2024, and recently extended the comment period. Written comments now due October 16, 2024. See https://www.federalregister.gov/documents/2024/09/17/2024-21085/2024-guidance-update-on-patent-subject-matter-eligibility-including-on-artificial-intelligence (English). #IPpolicy #patentexamination #patents #AI #patenteligibility
*Closes Soon* USTR - Request for Comments on 2024 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 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.
