Artigo – Using the courts to tackle excessive delays at the Brazilian PTO

12/09/2016 - Artigo – Using the courts to tackle excessive delays at the Brazilian PTO

World Trademark Review

Publicação Internacional – World Trademark Review – Issue 63

Using the courts to tackle excessive delays at the Brazilian PTO

The Brazilian courts have handed down a number of positive decisions for rights holders,  mitigating the impact of lengthy delays at the Brazilian Patent and Trademark Office

By Ana Paula Affonso Brito

Excessive delays at the Brazilian Patent and Trademark Office (BPTO) in the processing of patent and trademark applications, appeals, assignments and oppositions have led to uproar  among applicants – understandably, given that some have been waiting decades (sometimes even longer) for matters to conclude. However, there are signs that the situation may be about to change.

Constitutional background

The Brazilian legal system offers remedies against such excessive delays based on the principle of reasonable duration of administrative proceedings. This doctrine is governed by Section 5(LXXVIII) of the Constitution, as amended by Amendment 45/2004, which states that everyone within the judicial and administrative system is assured a process of reasonable duration and the means to guarantee this.

This is further supported by the principle of efficiency, which is governed by Section 37 of the Constitution. Indeed, even before Amendment 45/2004 came into effect, Law 9784/1999 on Administrative Procedures in the Federal Public Administration expressly stated that the public administration should be guided by several principles, including the constitutional principle of efficiency.

As a federal entity, the BPTO is subject to these regulations and should thus conclude all proceedings within a reasonable timeframe. Unfortunately, however, this has not been the case in practice. Despite the commitment and dedication of overworked BPTO examiners, the lack of closure in numerous cases has created significant legal uncertainty. However, the situation may be changing now that the federal courts – which are empowered to rule in lawsuits against government agencies (including the BPTO) – have stepped in and begun to issue decisions in this area.

Courts get involved

In particular, several recent decisions have held that:

• the backlog or potential priority of other matters cannot be used as na excuse to indefinitely postpone resolution of an administrative proceeding (Internal Appeal 2010.51.01.803242-7, Interlocutory Appeal 2010.51.01.808395-2, Federal Court of Appeals – Second Circuit); and

• the delays in registering applications are damaging legal certainty in this area (Appeal 2013.51.01.490011-0, Federal Court of Appeals – Second Circuit).

In addition, the BPTO’s failure to provide decisions within a reasonable timeframe has been deemed to be an abuse of power, resulting in several court actions being filed before the Federal Court of Rio de Janeiro, where the BPTO is headquartered. The outcomes of these cases have resulted in the BPTO and other Brazilian public agencies being ordered to deliver decisions within a reasonable timeframe. In some instances the courts have even issued preliminary injunctions requiring the BPTO to comply immediately with the constitutional principle of efficiency (Lawsuit 0133449-31.2013.4.02.5101, Federal Court of Rio de Janeiro).

Most of these judicial decisions were rendered as a result of shorter, accelerated lawsuits, which are available to anyone whose inalienable rights have been contravened by a public authority or government delegate. Plaintiffs in such lawsuits must submit all evidence of the abuse along with the brief; a trial court decision will be delivered as soon as the defendants’ answering petition has been examined.

When it comes to the BPTO’s delay in examining patent applications, two recent decisions are particularly relevant.

In Almirall S/A v BPTO (Lawsuit 0001956-23.2016.4.02.5101) the 13th Federal Court of Rio de Janeiro ordered the BPTO to grant Patent Application PI 012434-6 within 60 days of the preliminary decision. The application was filed in 2000, yet the BPTO took no action for approximately two years, despite approval from the National Health Surveillance Agency being issued on September 9 2013.

Applicants can now pursue a stronger and more efficient response against the BPTO backlog before the courts

Archimedes Development Limited also filed a petition for a writ of mandamus  before the Federal Court of Rio de Janeiro (Lawsuit 0004544-08.2013.4.02.5101) in order to compel the BPTO to commence examining Patent Application PI 0406674-0 within 60 days. The application was filed by the plaintiff on January 12 2004 and yet no action was taken by the BPTO until November 2013 – with the exception of one office action, which was duly completed by the applicant on April 2011. In view of the BPTO’s failure to act for over eight years, the court ordered it to commence examination within 60 days.

Although both these cases involved patent applications, the situation is no different when it comes to delays in examining trademark applications; several other petitions for writs of mandamus have been granted ordering the BPTO to analyse trademark appeals, assignments and oppositions within 60 days (eg, Writs of Mandamus 0129912-56.2015.4.02.5101, 0131120-46.2013.4.02.5101 and 0136035-70.2015.4.02.5101 – 25th Federal Court of Rio de Janeiro, 0005119-45.2015.4.02.5101, 0077933-55.2015.4.02.5101 and 0013673- 37.2013.4.02.5101 – 13th Federal Court of Rio de Janeiro).

Most of these decisions were based on the following constitutional grounds: “Section 05: XXXIII – all persons have the right to receive, from the public agencies, information of private interest to such persons, or of collective or general interest, which shall be provided within the period established by law, subject to liability, except for the information whose secrecy is essential to the security of society and of the State;…LXXVIII – a reasonable length of proceedings and the means to guarantee their expeditious consideration are ensured to everyone, both in the judicial and administrative spheres.”

Federal Law 9.784/99 – which regulates the federal public administration in Brazil – has also been quoted in these decisions: “Section 48: The administration has a duty to explicitly issue a decision in administrative proceedings and on requests or complaints in matters within its competence. Section 49: Once completed the administrative process instruction, the Administration has a period of thirty days to decide, unless extended by the same period expressly motivated.”

Although the BPTO appealed these decisions, they were confirmed by the Federal Court of Appeals. These judicial actions send a strong signal that applicants can now pursue a stronger and more efficient response against the BPTO backlog before the courts.

Ana Paula Affonso Brito is an attorney at law at Montaury Pimenta, Machado & Vieira de Mello