2 Sep
2019

"The Brazilian IP environment has changed a lot in recent years"

Montaury Pimenta, Machado & Vieira de Mello

Your practice is founded on broad expertise. How have you managed to develop the know-how required to succeed in this regard in Brazil?

For many years, our main goal has been to assist our clients with dedicated commitment, focusing on results. For standardised services, we have extremely reasonable fees in view of the budget concerns that most of our clients are currently facing.

In addition, we maintain close relationships with our domestic and foreign clients, visiting them from time to time, which enables us to better understand their businesses and needs.

Our firm also belongs to Brazilian law firm alliance Aliança de Advocacia Empresarial (ALAE), which is the most influential network of corporate law firms covering the whole of Brazil. This helps us to provide a local, quality legal service in each state, with qualified local attorneys who have the indispensable knowledge of regional culture and practice. Our firm is the only ALAE member to practise in intellectual property.

We also encourage our junior attorneys to attend legal training sessions at the National Institute of Industrial Property (INPI) – located a few blocks from our firm – and IP seminars organised by national associations. We also encourage them to participate in various IP committees at the Brazilian Association of Intellectual Property (ABPI), which provide a forum to discuss hot local IP topics.

You have been involved in a number of industry associations. In terms of professional development, why is such engagement important for law firm practitioners?

At present, I am the president of the ABPI, which is the principal IP association in Brazil, with more than 800 members.

In addition, our practitioners are members of several international IP associations. This engagement is extremely important because it improves education, provides updates on the INPI’s practices and decisions, as well as case law on IP matters, and helps to develop close relationships with government and judicial authorities.

What challenges are being raised by clients most frequently at the moment, and how can these be tackled?

The major challenges that we are facing in Brazil relate to:

  • the current patent backlog;
  • the implementation of the recently approved Madrid Protocol; and
  • the issue of costs in light of budget concerns among clients.

The INPI has finalised a project to deal with the first issue, which has become unacceptable given that the examination of a patent application in Brazil takes from 11 to 13 years. The recently announced project focuses on using examinations that have already been made abroad in relation to applications filed via the Patent Cooperation Treaty system, thereby avoiding new searches by Brazilian examiners.

The INPI expects to reduce the patent backlog by at least 80% over the next two years and for this purpose will be using standardised office actions requesting applicants to present prior art documents.

With regard to the second issue, the INPI is now discussing some minor – but important – steps to implement the Madrid Protocol, which will take effect in October 2019. These include introducing a multi-class system and local attorneys with power to receive judicial summaries.

How has the Brazilian IP environment changed over the past decade, and how should practitioners ensure that they stay at the forefront of practice?

The Brazilian IP environment has changed a lot in recent years, with many improvements taking place not only in regard to the INPI’s internal procedures and practice, but also at the courts. As such, practitioners must stay up to date with the new environment – both on a technological level and with regard to developments at the specialised IP courts in certain jurisdictions.

Finally, if you were to give one piece of advice to practitioners starting their career in intellectual property, what would it be?

My advice to new practitioners in the IP field would be – besides acquiring a good education in IP law – to have a better understanding of their clients’ businesses and needs, be proactive in their approach and focus on a business-oriented strategy, in order to find the best solution for any particular case and to avoid possible IP issues in Brazil or other countries.

Montaury Pimenta, Machado & Vieira de Mello

Avenue Almirante Barroso, 139, 7th Floor

Rio de Janeiro 20031 005

Brazil

Tel +55 21 2524 0510

Fax +55 21 2240 1524

Web http://www.montaury.com.br/

Luiz Edgard Montaury Pimenta

Senior Partner

[email protected]

Luiz Edgard Montaury Pimenta is a senior partner and head of litigation at Montaury Pimenta, Machado & Vieira de Mello. He is the current president of the Brazilian Association of Intellectual Property and has over 30 years’ experience in the IP field.

Mr Montaury Pimenta is a frequent speaker at IP conferences and the author of several articles on IP law. His expertise includes patents, trademarks, copyrights, domain names and unfair competition.