Genetic Resources and Patent Applications

From the Brazilian Instituto Nacional da Propriedade Industrial (INPI) we became aware that as of the 27th February, 2018, INPI will start to issue formal Official Actions (Official Bulletin Code No. 6.6.1) for all patent applications filed in Brazil covering inventions related to the access to national genetic heritage and/or associated traditional knowledge (TK) - (código de despacho 6.6.1).

This will be automatically issued in all patent applications filed with INPI and so, applicants need to provide proof of registration and / or authorization of access to access to national genetic heritage and/or TK within 60 days of publication in the Revista Eletrônica da Propriedade Industrial (the Brazilian Official Bulletin).The applicant shall produce a Guia de Recolhimento da União (GRU) which is a ‘positive’ declaration to the access to national genetic heritage and/or TK. According to INPI, if the applicant does not provide such proof within 60 days, ‘it will be considered that there was no access to the access to national genetic heritage and/or TK, and INPI will continue the examination of the patent application.’ [wait…INPI will continue? so what is the point?]

INPI also informs that this formality is needed ‘because Law 13,133 / 2015 establishes that, for the purposes of regularization in INPI of patent applications applied for during the validity of Provisional Measure No. 2.186-16 / 2001, the applicant must present the
proof of registration or authorization of access to the national genetic heritage and /or associated TK within one year counted from 06/11/2017.’…does it mean that INPI will continue examining the application but yet will not grant the patent because there is a need to this formality?


I don’t feel supportive of this notification made by INPI. It is like…hello, please submit the proof, if you don’t, then no worries we’re still going ahead with examining your application. This guidance or declaration made by INPI should have been better defined and actually challenging the applicants, e.g. ‘no proof no examination’ (especially in an office that suffers from backlog). Firstly, a company continuing with their application will just want to test the waters with their invention and once they see that they have a chance of being successful, then would look for the proof of registration and / or authorization of access to the national genetic heritage and / or associated TK.

Source INPI.