The Brazilian PTO welcomes contributions to internal rules for the examination of patent applications claiming transgenic plant-related inventions

By Bernardo Alexandre Marinho and Pedro Henrique Borges de Figueiredo, partners at Danneman Siemsen

In March 2022, the Brazilian Patent and Trademark Office – the Brazilian PTO – issued technical note No. 1/2022. This note provides guidelines for examining patent applications claiming inventions related to transgenic plants, particularly elite events.

After issuing the technical note, the Brazilian PTO realized that these rules could be improved by the contribution of users of the patent system. Because of this, the Brazilian PTO suspended the technical note’s applicability and opened a public consultation to receive comments and suggestions.

Interested parties have until June 30, 2022 (1) to submit suggestions and comments regarding technical note No. 1/2022. At the end of this deadline, the Brazilian PTO will study the received contributions and issue a new and updated technical note or ratify technical note No. 1/2022.

The acceptable downside is that the examination of any patent application claiming transgenic event-related inventions is stayed due to the technical note’s suspension. The Brazilian PTO shall resume examining these applications once the new technical note is issued.

Here are the two points of technical note No. 1/2022’s that, in our view, the Brazilian PTO must change to keep Brazil as a leading jurisdiction for innovation, protection, licensing and farming of transgenic plants.

Inventive Step

Technical note No. 1/2022 indicates an event-related invention involves an inventive step if it has a unexpected technical effect.

It is our opinion that the Brazilian PTO must remove this provision because it lacks support in the IP Law. Article 13 of the Brazilian IP Law does not link an unexpected technical effect with an inventive step. It determines that an invention involves an inventive step if, having regard to the prior art, it is not obvious or evident to a skilled person. An unexpected technical effect is only one among other possible tests for inventiveness.

Based on the Brazilian Constitution, the PTO is entitled to issue internal rules to clarify a rule already established in the IP Law, i.e., the PTO cannot create rules not defined in said law.

Isolated

Technical note No. 1/2022 states that a patent examiner should only accept claims directed to modified (2) DNA if the claim defines that the DNA is “isolated,” for compliance with article 18 (III) of the Brazilian IP Law.

This provision states that part of living beings, except transgenic micro-organisms, would not be patentable. This provision appears not to be supported by TRIPS, as this agreement does not include parts of non-natural living beings among possible exclusions from patentability.

Our opinion is that this requirement results from an incorrect interpretation of the Brazilian IP Law; therefore, the Brazilian PTO must delete it from technical note No. 1/2022.

A further reason for the suggested removal relies in that article 18 of the Brazilian IP Law should be interpreted narrowly, in line with the general rule that restrictive legal provisions should be interpreted narrowly.

In this regard, it is worth mentioning that article 18 defines an exception to the rule in article 8 of the Brazilian IP Law that any invention “that meets the requirements of novelty, inventive step and industrial application” is patentable. In this line, the Brazilian PTO correctly grants patents for computer-implemented inventions, even though computer programs themselves are not patentable according to article 10.

As a final observation, for issuing a new technical note, the Brazilian PTO must remember that one cannot interpret the IP Law solely based on a technical-scientific meaning. First, one should perform a legal interpretation of the IP Law. Then, one must define the result of the legal interpretation based on the science. Considering this, the BPTO’s internal attorneys should act to review the current technical note and prepare a new technical note.

To sum up, innovators must participate in the public consultation by submitting comments and suggestions so that the Brazilian PTO issues a technical note with rules that improve the Brazilian patent system and reduces uncertainty.

(1) The Brazilian PTO’s announcement about the public consultation mentions a 30-day term to submit comments. As the Brazilian PTO published the announcement on June 1, 2022, to be on the safe side, our suggestion is to consider that the term expires on June 30, 2022.
(2) The claimed biological sequence must be not identical or indistinguishable from its natural counterpart.