Article 12 of Brazilian Law 9279, of 14 May 1996 states that
The disclosure of an invention or utility model which occurs during the twelve months preceding the date of filing or priority of the patent application will not be considered as part of the state of the art, provided such disclosure is made:
I – by the inventor
II – by the National Institute of Industrial Property – INPI, by means of the official publication of a patent application filed without the consent of the inventor and based on information obtained from him or as a result of his acts; or
III – by third parties, on the basis of information received directly or indirectly from the inventor or as the result of his acts.
The Brazilian Patent Office (National Institute of Industrial Property – INPI) has issued an Opinion in which “third parties” as appearing in Article 12 – III, does not include foreign (i.e. Non-brazilian) Industrial Property Offices. Thus the Brazilian Patent Office understands that the grace eriod does not include official publication of a patent application by a foreign patent office, which is considered novelty destroying.
According to a newsletter recieved from Brazilian associates MOMSEN, LEONARDOS & CIA., the “interpretation” appears to be more than the wording of the Law can reasonably hold, and may well not hold up if challenged in the courts.
In this regard we note that earlier this year the Israel Commissioner of Patents, Dr Meir Noam, has done something analgous regarding registered designs, where Israel Law (actually a regulation inherited from the British and never replaced) requires local novelty only. Based on premise that anything published on the Internet by a foreign Patent Office is accessible from Israel, he ruled that such publications are local novelty destroying, although other Internet publications are not.
I think the underlying “logic” – to use a polite euphemism – is similar. However, in both cases, the legislative assembly should update the rules, but even if they are tardy in so doing, that does not mean that the Patent Offices have authority to do so themselves.
