Judicial Remedies against Excessive Delay in BPTO Examination

The excessive delay of the Brazilian Patent and Trademark Office (BPTO) in conducting examinations of patent/trademark applications, appeals, assignments, oppositions, amongst other office actions, has been the source of widespread dissatisfaction for applicants in recent years, with some awaiting the conclusion of the examination process for over a decade.

Nowadays, the BPTO has been expediting trademark examinations, in order to adjust to Madrid Protocol. However, with respect to Patent applications, there is still an undisputable backlog and excessive delay in the examination process.

Fortunately, the Brazilian legal system offers remedies against such excessive delay, based on the reasonable duration of administrative proceedings principle, which has been subject of several judicial measures, in Brazil.

The doctrine of reasonable duration of judicial and administrative proceedings is set out in Section 5, item LXXVIII, of the Brazilian Federal Constitution, as amended by Constitutional Amendment No. 45, 2004, and states that everyone within the judicial and administrative scope shall be guaranteed a reasonable duration of the process and the means to guarantee the speed of its progress.

This principle is further supported by the principle of efficiency, which is also governed by the Brazilian Federal Constitution (section 37). Indeed, even before the above-mentioned constitutional amendment, Brazilian Federal Law no. 9784 of 29/01/1999, governing the administrative procedure in the Federal Public Administration was enacted, expressly stating that the Public Administration should be guided by several propositions including the constitutional principle of efficiency.

The BPTO, as a federal entity, is subject to these regulations and must ensure compliance in all proceedings within a reasonable time frame.

Unfortunately, as already mentioned, this has not been occurring. Despite the commitment and dedication of the BPTO examiners, who are undoubtedly understaffed given their demands, the lack of closure in numerous cases has created legal uncertainty and a position that is opposed to the principle of efficiency.

As a result of such unjustified administrative excessive delay, the Brazilian federal courts, which are empowered to rule in lawsuits against Brazilian federal government agencies (including the BPTO), has stepped in and issued various decisions.

The Brazilian courts have rendered several decisions finding that (i) the work backlog, or the potential priority of other matters cannot be used as an excuse to indefinitely postpone the resolution of the administrative proceeding (Internal Appeal no. 2010.51.01.803242-7, Interlocutory Appeal 2010.51.01.808395-2, Federal Court of Appeals - 2nd Circuit), and (ii) the delay of the BPTO in considering registration applications does nothing to bolster legal certainty (Appeal no.2013.51.01.490011- 0, Federal Court of Appeals - 2nd Circuit).

Omissions and failures by the BPTO to provide decisions within a reasonable time frame have been deemed to be an abuse of power, and have resulted in the filing of several court actions before the Federal Court of Rio de Janeiro, the city where the BPTO has its headquarters. Brazilian trial courts have been ordering the BPTO and other Brazilian public agencies to make decisions within a reasonable time, and in some instances, preliminary injunctions have been granted by the courts requiring the BPTO to immediately comply with the constitutional principle of efficiency (Lawsuit No 0133449-31.2013.4.02.5101, Rio de Janeiro Federal Court).

In this sense, most of these judicial decisions are being rendered in a shorter and accelerated lawsuit, through which anyone who suffers, by illegality or abuse of power (and public omission is included in such abuse) from a public authority or delegate of the government, on the grounds of a certain and incontestable right, can seek relief against the illegal act. In view of the nature of such lawsuit, all evidence of abuse must be submitted by the Plaintiff with the brief and a trial court decision will be provided immediately after analyzing the defendants answer petition.

When it comes to the BPTO’s delay in Patent application examinations, it has been ordered to grant patents pending examination for over 10 years, within a period of 60 days. In other cases, the office has been ordered to start the examination of a patent application which is pending for many years, in which a single office action has been accomplished by the applicant and where there have been no further developments in the examination process.

Most of the above decisions are being rendered on the grounds of following legal provisions, which are set forth in the Brazilian Federal Constitution:

Section 05: XXXIII – all persons have the right to receive, from public agencies, information of private interest to such persons, or of collective or general interest, which shall be provided within the period established by law, subject to liability, except where the secrecy of information is essential to the security of society and of the State;

(…)

LXXVIII – a reasonable length of proceedings and the means to guarantee their expeditious consideration are ensured to everyone, both in the judicial and administrative spheres.

In addition, Federal Law no. 9.784/99 which regulates the Federal Public Administration in Brazil has also been quoted in most decisions, as Section 48 and 49 states the following:

Section 48: The administration has a duty to explicitly issue a decision in administrative proceedings and on requests or complaints in matters within its competence.

Section 49: Once the administrative proceeding instruction has been completed, the Administration has a period of up to thirty days to decide, except in case of any expressly motivated extension for the same period.

It is important to mention that, when questioned by the BPTO, such decisions have been maintained by the Federal Court of Appeals, empowering applicants to pursue a strong and efficient response against the famous BPTO´s backlog before the courts.

Fonte: Lexology - https://www.lexology.com/library/detail.aspx?g=6b5abbf2-71fb-4ab6-8273-fb6671c7146f&g=6b5abbf2-71fb-4ab6-8273-fb6671c7146f