3.2.4 Administrative review proceedings
The procedures for filing and granting patents are considered administrative proceedings, which are governed by the LPI and by specific INPI rules (Figure 3.2). An appeal may be filed against the decisions rendered by the INPI regarding the granting or not of a patent within 60 days of the decision (Article 212 of the LPI). A decision that determines the final dismissal of a patent application or that grants a patent application, a certificate of addition is not appealable (Article 212(2) of the LPI).
Source: Adapted and translated (by the authors) from Núcleo de Inovação Tecnológica, Processo Resumido para Requerimento de Patentes (June 5, 2016), pt.slideshare.net/AntnioSilva61/fluxograma-de-patente-resumido
According to Article 221 of the LPI, the time limits for the administrative proceedings for granting a patent are continuous, automatically extinguishing the right to perform the act after its expiry, unless the party proves that they did not perform the act for a just cause – that is, if the party demonstrates that an unexpected event occurred beyond their will and that prevented them from performing the act. In counting the time limits, the start day is excluded, and the due date is included (Article 222 of the LPI). The time limits only start being counted from the first business day after the notification, which is made upon publication in the INPI’s official body (Article 223 of the LPI). Regarding the administrative proceedings governed by the LPI, Article 224 clarifies that, if there is no express determination, 60 days is the time limit that must be considered for the practice of the act.
It should be noted that judicial acts in relation to a patent protection matter or possible questioning regarding the granting of its registration are governed by the CPC, which has specific rules regarding time limits and their counting.
The INPI’s acts, orders and decisions regarding industrial property are published in the RPI. To facilitate reading, a table of codes of orders and a numerical index on the RPI’s initial pages allow for the identification of the progress of the application or patent. Users must monitor their applications through the RPI with the number assigned to their application. The request for a patent application or certificate of addition is notified in the RPI with Order Code 2.10.
Next is the formal examination regarding the provisions of Article 19 of the LPI, the other provisions regarding its form or both. If such provisions have not been met, the formal requirements are published with Order Code 2.5. The user is required to meet the requirements within 30 days, free of charge, under penalty of the documentation being returned or the application being dismissed (Article 20 of the LPI). If the requirements are not met by this deadline, the filing is not accepted, and its numbering is canceled.
If there are no formal requirements, Order Code 2.1 is notified. If the application is properly supported with documents, then, after formal analysis, it will be filed, and the filing date will be the date of its submission (Article 20 of the LPI). The application is kept confidential for 18 months from the earliest priority date (Article 30 of the LPI). After 18 months, the application is published (Order Code 3.1).
In the case of a certificate of addition, the confidential period is 18 months from the filing date of the main application. When publication of the main application has occurred, the application for a certificate of addition is published immediately. The user may request early publication of their application (Order Code 3.2); however, this does not mean that the technical examination will be advanced.
A withdrawn or abandoned patent application must also be published (Article 29 of the LPI). A request for withdrawal must be submitted within 16 months of the filing date or earliest priority date (Article 29(1) of the LPI). The withdrawal of a previous filing without producing any effect gives priority to the immediately subsequent filing (Article 29(2) of the LPI).
It is the applicant’s responsibility to follow up on the processing of their patent application. This can be done by the PUSH-INPI system by registering the desired process and receiving the publications at the registered email address; however, this does not replace the follow-up made via RPI.
The applicant or patent holder has 60 days (ordinary term) from the publication of the granting in the RPI (Order Code 9.1) to present evidence they have paid the fee for the issuance of the letters patent. The mentioned payment can also be made within 30 days (extraordinary term) from the end of the previous term by means of a payment of a specific fee, providing evidence of such to the INPI,24 under penalty of final dismissal of the application (Order Code 11.4). PR Resolution No. 13, of March 18, 2013, regulates the delivery of letters patent in electronic format only and presents other provisions.
The substantive examination of the patent application must be requested by the applicant or by any interested party within 36 months of the filing date, under penalty of the application being dismissed (Article 33 of the LPI). In this case, upon notification of the dismissal in the RPI (Order Code 11.1), the applicant has 60 days to pay a reinstatement fee, together with a request for application examination, under penalty of final dismissal (Order Code 11.1.1; Article 33(1) of the LPI), thus restoring the application. The reinstatement must be requested using the form Petition Related to Application, Patent or Certificate of Addition. If the reinstatement is not requested, the matter subject to the patent application becomes available in the public domain. To better clarify or define the patent application, an applicant may make amendments up to the request for examination, provided that they are limited to the matter initially disclosed in the application (Article 32 of the LPI).
Once the examination is requested, the following must be submitted within 60 days, whenever requested, under penalty of having the application dismissed:
I – objections, search for prior art and examination results for the granting of a corresponding application in other countries, when priority is claimed;
II – documents required for the regularization of the process and examination of the application; and
III – a simple translation of the appropriate document referred to in Paragraph 2 of Article 16 of the LPI, if it has been replaced by the declaration provided for in Paragraph 5 of the same article. (Article 34 of the LPI)
During the technical examination, a search report and opinion concerning the following are prepared:
I – patentability of the application;
II – suitability of the application given the nature claimed;
III – reformulation of the application or division; or
IV – technical requirements. (Article 35 of the LPI)
This search is conducted, in general, by engineers and technicians specialized in the patent system and in various technological fields. They check whether the wording of the application complies with legal standards, as well as with the state of the art, in a survey that may include technology from all over the world. At this stage of examination, any interested party can submit comments and documents.
When the opinion ascertains the non-patentability or the lack of suitability of the application to the nature claimed, or makes any requirement, the applicant will be notified to provide their comments within 90 days (Article 36 of the LPI). If the requirement is not met, the application will be definitively dismissed (Article 36(1) of the LPI). If the requirement is answered, even if not satisfied, or its formulation is contested, with or without a statement on patentability or suitability, the examination will proceed (Article 36(2) of the LPI).
The examination may conclude that the application is patentable (Order Code 9.1); that it is necessary to adapt the application to the claimed nature, to reformulate or divide the application or to meet technical requirements (Order Code 6.1); or that the application is unpatentable (Order Code 7.1). The fulfillment of the requirements set out or the opinion on the patentability of the application must be met within the period determined by Article 36 of the LPI – that is, within 90 days.
Once the examination is concluded, a decision is rendered, either granting or rejecting the application (Article 37 of the LPI).
3.2.4.1 Declaration of patent nullity
The patent’s nullity is declared administratively when:
I – any one of the legal requirements has not been met;
II – the specifications and the claims do not comply with the provisions of Articles 24 and 25 of the LPI, respectively;
III – the subject matter of the patent extends beyond the content of the application originally filed; or
IV – any of the formalities essential to the granting have not been met during the patent’s processing. (Article 50 of the LPI)
It is possible that the nullity does not affect all claims. The condition for a partial nullity is that the remaining claims be patentable by themselves (Article 47 of the LPI).
Patent nullity takes effect from the date the application is filed (Article 48 of the LPI). An action for nullity may be filed at the INPI’s own initiative or at the request of any person with a legitimate interest, within six months counted from the grant of the patent (Article 51 of the LPI). The nullity proceedings continue even if the patent’s term has expired (Article 51(1) of the LPI).
The first hypothesis of an administrative declaration of nullity is the one that occurs before the INPI in cases where the offense is due to other legal provisions contained in the LPI,25 as provided for in Article 50 of the LPI.26 In this case, even if the interested party does not request the declaration of nullity of the patent, the INPI has jurisdiction to file the administrative proceedings at its own initiative, pursuant to Article 51 of the LPI.27 Therefore, it is important to highlight the rule provided for in Article 51(1), which governs the continuation of nullity proceedings even if the patent has been terminated. As André Luiz Santa Cruz Ramos has stated, “this rule is explained by the declaration of ex tunc (retroactive) effects of the patent nullity declaration.”28 After all, even if the patent has already been terminated, patent nullity necessarily nullifies all effects produced during the patent’s existence as well.
From the moment that administrative proceedings are filed, the due process of law is followed. Patent holders may exercise their right of defense29 and must make a statement within 60 days.30 The INPI then issues an opinion and notifies the holder and the claimant in the same period above.31 The INPI’s president then decides on the matter, thus closing the administrative proceedings.32 The INPI publishes the decision of the action for nullity once it has become final and unappealable, in order to notify third parties (Article 57(2) of the LPI).
3.2.4.2 Appeals
As for the appeals that may be filed in the administrative phase before the INPI, the provisions of Articles 212–220 of the LPI are applicable.
Article 212 of the LPI establishes that, unless expressly provided otherwise, the decisions mentioned in the law may be appealed, though they must be filed within 60 days. Appeals are entertained with supersedeas and full review effects, applying all the relevant provisions to the lower court’s examination as applicable.
A decision that determines the definitive dismissal of a patent application or that grants the application for a patent, a certificate of addition is unappealable (Article 212(2) of the LPI).
A petition will not be entertained:
I – if it is submitted after the time limit set in the law; or
II – if it is not accompanied by the proof of payment of the respective fee in the amount in effect on the date of its presentation. (Article 218 of the LPI)
A petition, the opposition and the appeal, will not be entertained when:
I – it is submitted after the time limit set in the law;
II – it does not contain legal grounds; or
III – it is not accompanied by the proof of payment of the corresponding fee. (Article 219 of the LPI)
The INPI will take advantage of the parties’ acts, whenever possible, establishing the appropriate requirements (Article 220 of the LPI).
Interested parties are notified, within 60 days, to submit their briefs on the appeal (Article 213 of the LPI). For the purposes of complementing the appeal brief, the INPI may impose requirements, which must be met within 60 days (Article 214 of the LPI). After this deadline, the appeal is decided (Article 214(1) of the LPI).
Appeals are entertained with full supersedeas and review effects and are decided by the INPI’s president. The decision, being final and unappealable, ends the administrative proceeding (Article 215 of the LPI).