BPTO publishes the 2nd ed. of the Industrial Designs Manual

By means of Ordinance INPI/PR Nr. 36 of September 6, 2023, published on September 12, 2023, the Brazilian PTO has published the 2^nd edition of the Industrial Designs Manual, which shall be officially in force starting on October 2^nd, 2023.

The objective of this new edition is to bring Brazilian Guidelines concerning industrial designs prosecution in line with the guidelines of the Hague System.

In summary, what applicants should pay attention in order to file design applications in Brazil:

• No merits examination, unless requested by the applicant after grant;
• Priority documents must be submitted upon filing or within 90 days (WIPO-DAS numbers will also be accepted);
• Partial claiming by using dashed/broken lines will be allowed;
• Dynamic graphic user interfaces can be protected: each frame of the graphic user interface shall be filed as consecutive drawings, and the frames shall be analyzed as a single entity;
• Fonts, typography and logos will be allowed;
• Limited to 20 variations/embodiments of the object, provided that the variations are in the same Locarno class and share the same preponderant distinctive characteristic;
• Grace period of 180 days from the filing date, or from the priority claim.

As to the prosecution of the application, the Brazilian PTO will examine formal requirements in the petition upon filing (e.g., data regarding applicants, authors, priority number, etc.). If no issues are detected, the application will proceed to the technical examination, which essentially comprises a formal analysis of the specification and drawings.

As mentioned above, one of the most prominent changes is that, henceforth, Brazil will be accepting partial claiming. Previous versions of the Manual only allowed the use of dashed/broken lines to disclaim a part of the object in very specific cases which, in general, did not apply to most applications. As such, applicants were obligated to either remove the dashed/broken lines or, in most cases, convert them into continuous lines. This directly impacted the scope of protection of the industrial designs.

Another positive change is the possibility to claim dynamic or animated graphical interfaces. Applicants may therefore submit a sequence of static figures (numbered sequentially). It is worth highlighting that the sequence will be examined as a group. As such, if a given frame does not meet registrability requirements alone, but the group as a whole does, the design should be considered registrable.

Notwithstanding, note that some requirements did not change. For instance, Brazilian Law determines that each application is limited to 20 variations (i.e., embodiments) of the claimed object and they must all share the same preponderant distinctive characteristic. As such, the 2^nd ed. maintains these conditions for all applications, so applicants entering through the Hague System should mind the number of variations and objects in their applications. Unless both conditions are met, the application will need to be divided during examination.

Another unchanged limitation is that of Article 100 of Brazilian IP Law. Said article determines what is not registrable as a design in Brazil and is divided in two parts:

1. what is contrary to morals and good costumes, offensive or contrary to liberty of conscience, creed, religion, etc.;
2. the necessary common or ordinary shape of an object or, further, that which is determined essentially by technical or functional considerations.

In general, most objections related to Article 100 concern part II. In simpler terms, part II concerns objects which lack ornamental features. Some common examples are:

• Simple screws, cogs, connectors, tubes etc. (form determined by technical or functional considerations);
• Cubes, spheres, prisms or any purely geometrical forms (form is considered common or ordinary).

Overall, the changes in the 2^nd ed. of the Manual represent a modernization of the prosecution and protection of industrial designs in Brazil. It is expected that the BPTO will be able, therefore, to catch up to current trends, especially those related to the digital world.

If you are interested in obtaining more details or have any specific questions concerning filing of industrial designs and their prosecution in Brazil, do not hesitate to contact us at mail@kasznarleonardos.com.