Regulation & Law

Marcello do Nascimento: "Legislators have always followed global trends when it came to IP, and our legal framework is considere

Partner of David do Nascimento Advogados, Marcello shares his experience, discussing the political and economic scene of Brazil and explaining what the future may hold for the largest country in Latin America.

Partner of David do Nascimento Advogados, Marcello shares his experience, discussing the political and economic scene of Brazil and explaining what the future may hold for the largest country in Latin America.

What is your view of the current situation in Brazil?

Corruption has caused a political crisis that has severely harmed our economy and the end isn’t near, but there is hope that something positive may grow out of this turmoil. I hope the hardships will raise awareness in the population concerning the negative consequences of corruption, which will hopefully instigate new politicians to rise and fight this problem. This is what we hope the future will bring us. In 2018, the presidential election will be crucial for the economy of Brazil, because it will determine the future of two hot topics -- the initiative to simplify entrepreneurship and the new labor law.


This second item aims to give more freedom to create an agreement that better fits the necessities of the employer and the employee. With the old law, you had to follow very strict rules when hiring. It was illegal to be more flexible and try to benefit both parties. The law has been approved, but whether it will stay on the statute remains to be seen. This is a spark of hope for a country that has attracted the attention of foreign investors. 


Thinking of the long-term future of Brazil, foreign companies are taking advantage of the current crisis, making investments and preparing for our economy’s recovery. With that, the legal market may also grow. Brazil has opportunities and IP always tends to follow the development of a country. More businesses mean more development of technologies, thus a higher needed for protection.


How does Brazil compare to the rest of the world in terms of IP protection?

Legislation in Brazil is modern and well thought-out, our problem, rather, is structural. Legislators have always followed global trends when it came to IP, and our legal framework is considered efficient. However, we still have improvements to make within our institutions. The judiciary system and the Brazilian INPI are plagued with inextricable structural problems that demand strong measures by the government.


That being said, we are happy to see that these questions are gaining importance. The Ministry is giving attention to the subject, being more directly involved with the problem of INPI’s backlog. INPI and the Minister of the Industry, Foreign Trade and Services are discussing specific measures to solve the backlog problem and its inherent collateral: the current overload of work put upon the examination teams. There have been some hires in the past months and now the project is becoming more ambitious, with a higher number of hires. They also plan on offering better career plans, to retain trained professionals.


How do you solve the backlog issue?

One of the ideas that is currently being considered is blanket approval for all requests. It does sound extreme,but it might be the best solution ‒or rather the least-worst.


The current INPI view is that the number of pending patents, which respective products/processes will reach the market and, consequently, require a subsequent examination, is not that substantial, when compared with the volume of patents currently awaiting examination. As per BPTO`s proposal, for those cases that applicant considers that the examination is essential, it is possible to “opt out” from the simplified granting proceeding.


What would be the consequences of such a mass concession of patents?

If all current requests were to be granted at once, the judiciary system would de facto have to absorb a great volume of litigation cases and the companies would have to prove the invalidity of their competitor’s patents in the courts of justice. Our firm is prepared to shoulder this increase in demand.


However, this would not solve all the issues, because with the workforce the INPI currently has, it would not be able to meet the incoming number of requests, which would lead to an increase in the backlog. The mass granting of patents alone will not solve the problem. In parallel, you must hire the required professionals to ensure that backlog does not become a problem again.


Are PPHs a possible solution?

Yes, but only as a secondary solution, because if the aforementioned measures are taken, they will diminish the need for such partnerships, as Brazil implemented these agreements due to its extensive backlog. If you remove the backlog, you will no longer have a need for patent prosecution highwayss.


Moreover, there is a desire within the INPI to avoid these partnerships, because reviewers claim that they often do not agree with the decision made by the partner office and, considering that the Brazilian reviewers need to add their signature to the patent, they do not feel comfortable adding their names to a review made by another individual.


What do you think about the idea of INPI gaining financial autonomy?

It would be a very important and positive change, because INPI does generate sizeable revenue, but very little actually comes back to the institution from the government. More resources would mean more competitive HR strategies. It would also allow for more investments in technology, which can dramatically enhance the efficiency and productivity of INPI.


Considering the state of the government, do you think this is viable?

This will occur progressively. Previously, the government had the aim of reducing the budget for INPI, but this idea was scrapped. Now, it will start moving towards the new plan. The discussions are very recent and, if everything happens as expected, these changes might start by the end of 2017. This is a short-term project, but the problem we have is the political scene, because, with the turmoil in Brazil, things can change quickly. However, as of now, the situation is favorable for the implementation of these changes in INPI.


How does the firm deal with work coming from abroad?

David do Nascimento has always been very active internationally: we make sure to stay updated on the latest trends, we publish newsletters with content that is relevant to them, we attend all the major events, etc.


Our firm has a strong focus on foreign clients and has developed a very specialized and customized service that meets the individual needs of each of our clients. We know how to handle requests coming from anywhere in the world and understand that each client requires our full attention. We give our best to provide them with personalized service. We are very flexible.


How do you see the future of IP?

We understand that the tendency is to see a decrease in the number of prosecutions, due to the automation of the field.


We believe that the firm will come to the point where it delivers the best value to its clients when focusing on advice and legal work. In the meantime, we are happy to help them with their filings, always making sure they get the best service available in the market at a competitive price.




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