In 1998, Hugo Casinhas da Silva had the foresight to invest in IP law when the market was still in its initial stages and opened Hugo Silva & Maldonado Propriedade Intelectual in Rio de Janeiro, Brazil. Since it was established, the goal of the founding partners has been to provide top level service to demanding foreign Clients. Nowadays the firm is capable of handling any IP matter in Brazil and abroad.
Leaders League. Nowadays, what are the main challenges for a foreign company wanting to protect its IP assets in Brazil?
Hugo Casinhas da Silva. Brazilian IP provides a modern set of laws for those seeking to obtain intellectual property rights and establish a presence in the growing domestic market of the country. Several issues are regulated concerning patents, trademarks, utility models, industrial designs, computer programs, copyrights, plant varieties, integrated circuits, transfer of technology, franchising, trade secrets, fair competition and geographical indications.
Enforcement of IP rights in Brazil is consolidated with a fair justice system and available remedies to unfair competition, patent and trademark infringement. Legal actions range from preliminary injunctions, search and seizures, writ of mandamus, appeals. Brazil recently enacted a comprehensive Arbitration Law and alternative dispute resolution is slowly gaining acceptance in the country. The main challenge to foreign investors who wish to obtain intellectual property rights in Brazil is the severe backlog of applications in the Brazilian Patent and Trademark Office (BPTO). This issue has discouraged prospective patentees from seeking rights in Brazil. However, there is great expectation about a proposal by the Ministry of Development and Industry to enact an extraordinary rule for a simplified automatic allowance of patent applications that fulfil certain requirements.
Regardless of its controversial nature and undeniable negative consequences, there is no doubt such drastic measure would eliminate a backlog of more than 200,000 pending applications in the space of a few years. There is growing concern in the Brazilian IP community about the fact that the backlog could return, if the structural issues of BPTO are not addressed at the same time. The Trademark Office lacks independence from the federal government and there are budgetary restrictions that limit the hiring of more examiners.
What changes in the Brazilian market can we expect in the next two to five years?
Despite political and economic setbacks in the years after the Olympics, the Brazilian economy has shown signs of recovery and vitality, with new investments in several areas. Another important aspect is the growing perception among the Brazilian businesses about the importance of intellectual property on a global scale. Data published by the BPTO shows a substantial increase in the number of patent and trademark applications by domestic business and individuals. Applicants shall expect a slight improvement in the prosecution time and clearer streamlined IP prosecution path, with measures that are being taken such as: hiring and training of new examiners, creation of electronic files, simplified internal procedures and approval of new trademark and patent examining manuals of procedure.
There has been visible progress in the trademark department of BPTO, which has made a higher number of publications. Nonetheless, there is still a significant delay in decisions to be issued in cases of trademark applications, which suffered oppositions or registrations that were challenged with cancellations. The Trademark Board struggles with a reduced number of examiners and a high number of contentions cases.