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COMPARISION OF PATENT ACT OF BRAZIL AND INDIA

Patent Act of Brazil

While Brazil has received more recent notoriety for its rapid economic development, what is
less-known is that Brazil possesses a fairly strong history of intellectual property jurisprudence.
Brazil has for some time maintained a public policy interest in the value of patents to the
country’s economy: its first patent laws were enacted in 1809, and Brazil was a founding
member of the 1883 Paris Convention. Despite its early development of patent jurisprudence,
Brazil’s intellectual property laws were nonetheless incongruent in key respects to the patent
laws of other more developed countries, particularly in respect of both the strength of the
country’s intellectual property laws as regards to granting patent holders enforceable rights, and
the mechanisms for patent enforcement within the country. Such incongruences become more
apparent with Brazil’s movement towards a more open economy, as Brazil’s membership in the
WTO and other multinational trade organizations required that it take steps to harmonize its
intellectual property laws with those of other member states. This was the essential genesis of the
enactment of Law 279.
Genetic engineering and particularly applications in the pharmaceutical area gave rise to the
Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which allows patent
protection to be accorded to inventions in the area of Pharmaceuticals. The TRIPS Agreement is
Annex 1C of the Marrakesh Agreement under the World Trade Organization, signed in
Marrakesh, Morocco on 15 April 1994.
Brazil signed the agreement with 13 other WTO members. When Brazil signed TRIPS, it
automatically had to reorganize its patent regulatory system. Brazil then approved a patent law in
1996 (Law 9279) and the next year approved a plant variety protection law (Law 9456). These
adjustments came a few years after TRIPS, and the Brazilian patent law incorporated what was
minimally required in the TRIPS Agreement.
The Brazilian law incorporated TRIPS-endorsed principles that were never accepted by the
international pharmaceutical sector, particularly compulsory license.
Qualification for Patent Applications
Title 1, Chapter 1 of Law 279 provides guidelines regarding the basic qualifications for a party to
be properly qualified to apply for a patent. While there is some suggestion in Law 279 that a
party could claim patent rights without having been the first to file an actual patent application3,
it is generally understood that Law 279 provides that Brazil will follow the global majority rule
of a “first to file” patent regimen, and that at a minimum, the evidentiary presumption under the
patent laws is that the first to file is the legal owner of the subject patent. Law 279 provides that
inventions created by employees with the means and resources provided by their employer are
owned by the employer in the absence of any contravening agreement. If a contravening
agreement exists, or if it can be shown that the invention was not developed with the use of
employer resources, ownership of any resulting patent would inure to the individual employee
inventor. Although Law 279 may thus seem to possibly obviate the need for a specific agreement
of assignment of patent rights, prudent legal practice always suggests that an agreement
assigning an employee’s rights of ownership to inventions at the time of inception of
employment is wise.
The Indian patents Act has been hailed as model legislation for developing countries. It seeks to
balance both the need for granting rewards for inventors while ensuring that India's
developmental needs are not ignored.

Subjects of Patent and Disclosure

Under Article 10 of Law 279, the following categories are deemed to not be the subject of
inventions on the apparent basis of being per se subjects of non-inventiveness, and are thus un-
patentable: i) Discoveries, scientific theories and mathematical methods; ii) Purely abstract
concepts; iii) Schemes, plans, principles or methods of a commercial, accounting, financial,
educational or advertising nature or for games of chance or surveillance; iv) Literary,
architectural, artistic and scientific works or any aesthetic creation; v) Computer programs per
se; vi) Presentations of information; vii) Rules for games; viii) Techniques and methods for
operations or surgery and methods for therapy and diagnosis practiced on the human body
ix) All or part of natural living beings and biological materials found in nature and isolated
therefrom, including the genome or the germ plasm of any natural living being, and any natural
biological processes. Article 18 of Law 279, in turn, provides that the following categories are
statutorily prohibited subjects of patentability:

i) Anything contrary to morality, decency or public safety, order and public health
ii) Substances, materials, compounds, elements, or products of any kind, including the
modification of their physical and chemical properties and the processes for obtaining or
modifying them, when they result from the transformation of the atomic nucleus
iii) Living beings, in whole or in part, except for transgenic microorganisms meeting the
three requirements of novelty, inventive activity and industrial application in accordance
with Article 8 and which are not mere discoveries.
Patent Filing Procedure
Counsel for patent applicants in Brazil should be aware of the following key procedural filing
points within the jurisdiction:

i) Pharmaceutical patent applications are subject to examination by not only INPI, but also by the
National Health Agency. This additional examination, along with the political sensitivity
surrounding pharmaceutical patents within Brazil, warrants careful attention by patent counsel
when choosing to apply for a pharmaceutical patent in Brazil.

ii) Because of the lengthy time involved in patent prosecution, counsel for a Brazilian patent
applicant should familiarize herself with those provisions under Brazilian law available to
expedite prosecution. In particular, a patent application which claims priority in a foreign
jurisdiction where the patent has already been issued may receive expedited review in Brazil, by
filing with INPI a copy of the patent granted in the country of claimed priority, along with a
Portuguese translation of the patent claims.

iii) When considering the cost and effort involved in filing a patent in Brazil, counsel should
make sure to take into consideration the incidental costs of filing, which at minimum will include
the costs of Portuguese translations, Brazilian consulate legalization of filing materials, sworn
translations, and notarization of filing materials.

Enforcement Provisions

Departing again from prior law, Article 43 of Law 279 provides a listing of activities statutorily
exempted from allegations of infringement, as follows:

i) Acts practiced by unauthorized third parties privately and without commercial


purposes, provided they do not result in damage to the economic interests of the
patentee
ii) Acts practiced by unauthorized third parties for experimental purposes, regarding
studies or for scientific or technological research
iii) The preparation of medicine according to a medical prescription for individual cases,
executed by a qualified professional, as well as to a medicine thus prepared
iv) A product manufactured in accordance with a process patent or a product that has
been placed on the internal market directly by the patentee or with his consent
v) Third parties who, in the case of patents related to living matter, use, with no
economic purposes, the patented product as the initial source of variation or
propagation for the obtaining of other products
vi) Third parties who, in the case of patents related to living matter, use, market, or sell a
patented product that has been lawfully introduced onto the market by the patentee or
its licensee, provided that the patented product is not being used for commercial
reproduction or propagation of such living matter.

Patent Act of India

Short title, extent and commencement

This Act may be called the Patents Act, 1970. It extends to the whole of India. It shall come into
force on such date as the Central Government may, by notification in the Official Gazette,
appoint: Provided that different dates may be appointed for different provisions of this Act, and
any reference in any such provision to the commencement of this Act shall be construed as a
reference to the coming into force of that provision.

The following are not inventions within the meaning of this Act:

i) An invention which is frivolous or which claims anything obviously contrary to well


established natural laws
ii) An invention the primary or intended use or commercial exploitation of which could be
contrary to public order or morality or which causes serious prejudice to human, animal
or plant life or health or to the environment
iii) The mere discovery of a scientific principle or the formulation of an abstract theory or
discovery of any living thing or non-living substance occurring in nature
iv) The mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any new
property or new use for a known substance or of the mere use of a known process,
machine or apparatus unless such known process results in a new product or employs at
least one new reactant. Explanation: For the purposes of this clause, salts, esters, ethers,
polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers,
complexes, combinations and other derivatives of known substance shall be considered to
be the same substance, unless they differ significantly in properties with regard to
efficacy
v) A substance obtained by a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance
vi) The mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way
vii) Omitted by the Patents (Amendment) Act, 2002
viii) A method of agriculture or horticulture

Inventions relating to atomic energy not patentable

No patent shall be granted in respect of an invention relating to atomic energy falling within sub
section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).

Persons entitled to apply for patents—(1) Subject to the provisions contained in section 134, an
application for a patent for an invention may be made by any of the following persons, that is to
say,— (a) by any person claiming to be the true and first inventor of the invention; (b) by any
person being the assignee of the person claiming to be the true and first inventor in respect of the
right to make such an application; (c) by the legal representative of any deceased person who
immediately before his death was entitled to make such an application. (2) An application under
sub-section (1) may be made by any of the persons referred to therein either alone or jointly with
any other person.

Form of application

(1) Every application for a patent shall be for one invention only and shall be made in the
prescribed form and filed in the patent office.
(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be
filed designating India shall be deemed to be an application under this Act, if a corresponding
application has also been filed before the Controller in India.

(1B) The filing date of an application referred to in sub-section (1A) and its complete
specification processed by the patent office as designated office or elected office shall be the
international filing date accorded under the Patent Cooperation Treaty.

(2) Where the application is made by virtue of an assignment of the right to apply for a patent for
the invention, there shall be furnished with the application, or within such period as may be
prescribed after the filing of the application, proof of the right to make the application.

(3) Every application under this section shall state that the applicant is in possession of the
invention and shall name the person claiming to be the true and first inventor; and where the
person so claiming is not the applicant or one of the applicants, the application shall contain a
declaration that the applicant believes the person so named to be the true and first inventor.

Grant of patents

(1) Where an application for a patent has been found to be in order for grant of the patent and
either: (a) The application has not been refused by the Controller by virtue of any power vested
in him by this Act, OR (b) the application has not been found to be in contravention of any of the
provisions of this Act, the patent shall be granted as expeditiously as possible to the applicant or,
in the case of a joint application, to the applicants jointly, with the seal of the patent office and
the date on which the patent is granted shall be entered in the register.

(2) On the grant of patent, the Controller shall publish the fact that the patent has been granted
and thereupon the application, specification and other documents related thereto shall be open for
public inspection.

General principles applicable to working of patented inventions

Without prejudice to the other provisions contained in this Act, in exercising the powers
conferred by this Chapter, regard shall be had to the following general considerations, namely
(a) That patents are granted to encourage inventions and to secure that the inventions are worked
in India on a commercial scale and to the fullest extent that is reasonably practicable without
undue delay

(b) That they are not granted merely to enable patentees to enjoy a monopoly for the importation
of the patented article

(c) that the protection and enforcement of patent rights contribute to the promotion of
technological innovation and to the transfer and dissemination of technology, to the mutual
advantage of producers and users of technological knowledge and in a manner conducive to
social and economic welfare, and to a balance of rights and obligations

(d) That patents granted do not impede protection of public health and nutrition and should act as
instrument to promote public interest especially in sectors of vital importance for socio-economic
and technological development of India

(e) That patents granted do not in any way prohibit Central Government in taking measures to
protect public health.

TRIPS Agreement

1. Process and product patents in almost all fields of technology


2. Term of patents 20 years
3. Limited compulsory licensing, no license of right
4. Almost all fields of technology patentable. Only area conclusively excluded from
patentability is plant varieties; debate regarding some areas in agriculture and
biotechnology
5. Very limited scope for governments to use patented inventions

Comparison between the two Acts pre-TRIPS

India Patent Act of 1970:

1. Only process not product patents in food, medicines, chemicals


2. Term of patents 14 years; 5-7 in chemicals, drugs
3. Several areas excluded from patents (method of agriculture, any process for medicinal
surgical or other treatment of humans, or similar treatment of animals and plants to
render them free of disease or increase economic value of products)
4. Compulsory licensing and license of right
5. Government allowed to use patented invention to prevent scarcity

Brazil:

1. 1971 law, coverage:


2. Process and product patents in Pharmacy
3. Product patents in chemicals
4. Patentability of microorganisms
5. Term of patent is 15 years
6. CL for non-work and not meeting market demand

Comparison of the two Acts post-TRIPS:

India:

1. Process and product patents in Pharma products


2. Patentability of microorganisms, plants, animals, or parts of plants and animals
3. Essentially biological processes for production of animals or plants, this seems to make
micro biological processes for production of plants and animals patentable
4. Term of patent is 20 years
5. CL for non-use, non-availability, high price.
6. Emergency CL

Brazil:

1. Process and product patent in Pharmacy and chemical products


2. Patent of genetically modified micro-organisms
3. Term of patent is 20 years
4. CL: Abuse of patent rights, abuse of economic power granted by patents, non-working,
emergency and public interest CL
References:

1. http://bricspolicycenter.org/homolog/arquivos/Apresentacao112.pdf
2. http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-
11march2015.pdf
3. http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_69_1_patent_2005.pdf
4. http://www.iicj.net/subscribersonly/08january/iicjjan6-brazil-russboltwood-utstarcom.pdf
5. http://blogs.nature.com/tradesecrets/2011/08/17/the-patent-system-in-brazil
6. http://www.bios.net/daisy/patentlens/2332.html

Submitted by:

M. Srivalli Soumya

Roll no: 150614024

MCOPS, Manipal