In view of the proposal from INPI (National Institute of Industrial Property) and MDIC (Ministry of Industry and Foreign Trade) to grant, without carrying out a technical examination, all patents that are currently awaiting patentability analysis from the institute, with the exception of applications for drug patents, Unicamp, through the Innovation Agency Inova Unicamp, sent its statement to the INPI last Friday regarding Public Consultation No. 2, in which it presents reservations to the proposal and warns of the implications that the action will have on the university, following the adoption of the simplified procedure for granting patent applications.
Unicamp's attention – which is the second largest patentee in the country and has 1.042 active patents in its portfolio – falls on four main axes: judicialization of the process, legal security, transaction costs, and the unfeasibility of applying and complying with the norm in a democratic way and egalitarian among interested parties.
Judicialization
Regarding the first item, judicialization, once patents are granted without carrying out a technical examination, there is the possibility of conflicting patents being granted, thus transferring a burden of processes involving industrial property to the Judiciary. Currently, the analysis based on patentability requirements, considering existing technologies and priors, is carried out in the technical examination phase by INPI. Therefore, in the event of litigation, the process would last for years, and could even exceed the waiting time for the backlog (accumulation of patents awaiting analysis by INPI) and the post-grant period of the patent by the institute.
“The risk of granting patents without technical examination will financially impact interested parties (patent applicants), considering the transaction cost due to the transfer of responsibility from INPI to judicialization. In view of the proposal presented, the transaction cost and even the overload of legal bodies in cases of litigation are questioned, which could be surprised with an imminent risk of non-compliance with their duties in a time compatible with market needs”, analyzes the institution in the public consultation.
legal security
Legal security, in turn, is directly linked to the institution's bargaining power vis-à-vis the market when negotiating the licensing of this technology – permission for a company to commercially exploit a technology for which the university holds the patent. Unicamp questions what value this patent – granted without a technical examination – will have to a company, expecting to be weakened in the negotiations of this contract and in the negotiation of economic gains.
“The legal certainty conferred by the granting of a technically examined patent to the detriment of a patent granted without technical examination directly impacts the business risk, the value of the intangible asset and consequently the negotiating power for the transfer of intellectual property, as is the case of Public Institutions that transfer technologies to the industrial sector, aiming to promote innovation and gains for society”, highlights the university in one of the excerpts of the document.
Transaction costs
Although present in the two previous items, the issue of transaction costs was mentioned specifically in Unicamp's open letter, given the concern about the financial crisis facing the university. According to the statement to the public consultation, in the case of the university, if the standard is approved, there will be an overflow of 428 patent applications – not yet examined by the INPI – capable of being admitted in this simplified process – without technical examination. Given the 30-day deadline, which was presented in the proposed rule, it will be unfeasible for Unicamp to admit all patent applications in the procedure, thus preventing the application and compliance with the rule in a democratic and egalitarian manner among interested parties.
“Based on the public finance rule, the rule makes it impossible for democratic and equal participation by Public Institutions that have optimized and realistic annual budget planning, based on expected expenses and annual projections, given the lateness of the rule with possible funding of extraordinary fees of a large number of patent applications that would have a patent letter issued without examination, immediately, in accordance with 'Public Consultation No. 2' regarding the standard”, he points out.
Democratic and egalitarian
In this sense, the university demands some actions from the INPI to ensure that public institutions are not harmed. “The Manifestation of the Inova Unicamp Innovation Agency submitted to INPI requests exemption from payment of fees for admission of the patent application from a public institution in the simplified procedure (without examination) and exemption from payment for issuing a (digital) charter from a Public Institution of patent applications from the backlog”, requests the university, considering that the provision for payment of these fees – which also includes the payment of a technical examination – is made based on strict monitoring of the deadlines related to the patent based on an average practiced in recent years. In other words: INPI's measure would impact additional costs for the university, which would make the process unfeasible.
Understand the problem
To get an idea of the amount that the backlog represents: in June this year, the number of patent applications pending examination reached 231.184. INPI currently has 326 servers dedicated to this function. The productivity index is 55 decisions in technical examinations per examiner per year. If the pace is maintained, the projection is that in 2029 there will be 349.080 requests awaiting analysis. The standard proposed by INPI, which is under public consultation until August 31st, would emerge as an alternative to remedy the backlog of patents. However, every year, 30 new patent applications enter the INPI. In other words: even with the proposal to grant the accumulated patents, a new backlog – of around 12 thousand patents without considering pharmaceutical patents – would already emerge in the following year, considering that the capacity of the INPI technical team is to analyze approximately 18 thousand patents.
Valuing and promoting improvements at INPI
Based on the scenario presented by INPI itself, the application of the standard would mean an instant solution for the backlog, but it would not prevent the future backlog of patent applications. In view of this, Unicamp, through the Innovation Agency, suggests: the restructuring of the INPI's budget, the restructuring of the civil servants' career plan and the entry of new civil servants.
Unicamp
According to the latest ranking released by INPI, related to the year 2016, Unicamp is the second largest patentee in the country. Today, its portfolio contains 1.042 active patents. In 2016 alone, 80 new patent filings were made. Of the total portfolio, 136 are licensed to the market. The body responsible for managing the university's intellectual property and technology transfer is the Inova Unicamp Innovation Agency.
