Significant developments for design protection in Brazil (and more to come)

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Significant developments for design protection in Brazil (and more to come)

Sponsored by

daniel-400px.png
designer choosing flooring and furniture materials from samples for home interior design project

It is not uncommon to hear that design protection is often underestimated or even forgotten compared to other forms of IP, like trademarks, patents, and copyright. In Brazil, that seems to be the case when you compare the average of 6,000+ design applications filed annually, with the 245,000+ trademarks and 28,000+ patents filings.

However, recent changes and improvements to the examination standards related to design applications in Brazil may attract more attention to this type of protection.

Indeed, the Brazilian PTO, in March 2019, published much-needed and long-awaited guidelines related to the examination of designs. Simpler – but useful – changes include the acceptance of auxiliary figures, including amplified ("zoomed-in") views to facilitate the examiner's understanding of the object-subject of protection. More substantial modifications include changes to how priority requests are analysed – any additional embodiment in the Brazilian application will receive an office action, allowing the applicant to move it to a divisional application without claiming priority.

The Brazilian IP Law only allowed the protection of objects as a whole, with not much leeway to protect parts (partial design) of objects. This frequently led to office actions to amend the drawings. Now it is clear that the Brazilian Patent and Trademark Office (BPTO) accepts designs covering parts of objects, as long as the claimed part represents an object as a whole.

While these have been significant improvements, the BPTO is not yet satisfied.

The examination timeline of design applications has been brought down to two months from filing when no office actions are issued, and there have been talks since February of further improvements to examination guidelines by the end of the year. In particular, more precise guidelines for design applications that include a trademark within the object and offering some flexibility when a trademark is necessary to present the aesthetic form of the object, are expected.

Keep the improvements coming!

more from across site and ros bottom lb

More from across our site

Speaking to Managing IP, Kathi Vidal says she’s looking forward to helping clients shape policy when she returns to Winston & Strawn
AA Thornton and Venner Shipley’s combination creates a new kid on the block, but one which could rival the major UPC players
Amit Aswal explains why you should take on challenges early in your career and why the IP community is a strong, trustworthy network
Five members of Qantm’s leadership team, including its new managing director, discuss how the business is operating under private equity ownership and reveal expansion plans
In our latest UPC update, we examine an important decision concerning the withdrawal of opt-outs, a significant victory for Edwards, and the launch of a new Hamburg-based IP firm
The combined firm, which will operate under the Venner Shipley name and have 46 partners, will go live in December
Vidal, who recently announced her departure from the USPTO, said she decided to rejoin the firm because of its team and culture
Osborne Clarke said John Linneker’s experience, including acting for SkyKick in the seminal dispute with Sky, will be a huge asset to the firm
Fieldfisher led arguments in court before Kirkland & Ellis took over shortly after SkyKick was acquired, it was revealed last week
Lawyers at Finnegan and Fross Zelnick explain why privacy formed a natural extension of their firms’ IP practices and share expansion plans
Gift this article