Experts warn: “Not every change is for the better”

The Brazilian Patent and Trademark Office (BPTO) made a public consultation on CPAPD Technical Note No. 01/2022, which aims to define the guidelines in the patentability examination of inventions associated with transgenic plant-related inventions. The consultation was open for 30 days and ended in early July.

Now, BPTO will present the proposals received and the definitive text of the technical note, which will define the guidelines to be followed by the examiners and allow greater predictability of the acts issued.

It is important to emphasize that transgenic plants are not patentable by virtue of art. 18 (III) of the Industrial Property Law (9279/96 also known as LPI in Portuguese), which does not consider the whole or part of the living beings as patentable, except for transgenic microorganisms. Therefore, the initiative is commendable to keep up with innovations.

However, experts warn that if guidelines are adopted in CPAPD Technical Note No. 01/2022, there may be losses in patent concessions that are already accepted by BPTO and represents a setback to biotechnological innovation in the country.

For instance, it indicates that an elite event is a process of genetic transformation (transgenesis) that has a superior technical effect when compared to other transformation events. However, this definition is already on Law 9279/06.

Another example involves accessory inventions related to transgenic plants whose parts are patentable, provided they meet the patentability requirements and conditions. It is noteworthy that, once recognized the non-obviousness of the main invention, that is, a transgenic plant, patentability is extended to ancillary inventions. In other words, the examination of the main invention becomes necessary for the granting of ancillary inventions, even though the main invention is a non-statutory matter.

We at Di Blasi, Parente & Associados firm are following the updates on the topic and are available to resolve any questions you have about this consultation.