Brazil, WIPO to Set Up Mediation System for Resolving IP Disputes

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  • Key provision: To accelerate the resolution of intellectual property disputes, Brazil's IP institute is setting up a mediation system with the help of WIPO.

  • Potential impact: It is hoped that disputes will be resolved in months rather than years as at present.

  • What's next: Mediators are being trained and the new system will begin to operate in December.

By Ed Taylor

RIO DE JANEIRO--In an effort to accelerate decisions in intellectual property disputes, Brazil's institute of intellectual property (INPI) has enlisted the expertise of the World Intellectual Property Organization.

On Sept. 23, INPI signed an agreement with WIPO to implement a conflict mediation system in Brazil. WIPO will assist in the training of mediators and setting up the structure for the system which is scheduled to start operating in December.

Litigation Currently Sluggish
Currently, intellectual property disputes are dealt with by two specialized courts, one in the city of Sao Paulo and the other in Rio de Janeiro. These courts, however, have proven to be extremely slow in handling disputes. According to attorney Andre Mendes of the law firm LO Baptista SVMFA, which specializes in intellectual property cases, the Sao Paulo court can take up to five years to resolve a dispute while in the Rio court, cases can last up to three years.

“If a case goes to the Superior Court of Justice, it can take up to eight years,” said Mendes, adding that over the last five years the superior court handled 226 appeals of cases involving disputes over product piracy and trademark violations.

This situation, he said, has led companies to delay the launching of new products and the application of new technologies.

“If you need a medication you can't wait ten years for the laboratory to win the right in the courts to produce it,” he stated.

Two- to Four-Month Pendency Viewed
INPI's goal with the new mediation system is to resolve disputes in two to four months, according to the institute's head of conflict resolution Cristovam Kubrusly.

“When they choose mediation, the parties are predisposed to define something that can really be implemented in a shorter time period and with a mediator always present,” said Kubrusly. “A faster decision of better quality and more complete also means that the final cost will be lower.”

INPI hopes to complete the training of 80 mediators in November with the assistance of a professional from WIPO. All of the candidates are attorneys with post graduate degrees and experience in intellectual property.

This is part of a generalized effort by INPI, which acts as Brazil's patent office, to accelerate its operations. In 2011, the institute launched an administrative reform to increase its number of patent request examiners by over 450 by 2015. The goal is to reduce the time period for patent approvals from the current average of six to eight years to four-and-a-half years.

Starting in November, this reform will also introduce a preliminary review process of patent requests. The object here is to eliminate those requests considered clearly inadequate and to establish priorities for the other requests. The number one priority will be for patents on medications, according to INPI patent director Julio Cesar Moreira.

Moreira said his office today has 160,000 patent and trademark requests waiting to be handled. In 2011, a record 31,000 patent requests were filed and the total is expected to reach 50,000 by 2014. Trademark requests in 2011 totaled 152,000, the highest ever and are increasing at the rate of 12,000 more requests annually. Approvals last year were 3,800 for patents and 61,500 for trademarks.

By Ed Taylor

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