On Patent Protection In BRIC

BRIC acronym is now widely used by economists and politicians to name a group of countries which advanced development may in recent years get raising influence and substantially contribute to global economic power together with G7 economies towards further development of the whole world. The acronym was introduced by a British economist Mr. Jim O’Neill as well as the vision of the Big Four — Brazil, Russia, India and China, as of the countries with comparably developed economies.

Since year 2001 when the BRIC concept became a constant in complex economic equations inclusion of BRIC countries in the allocation tiers when considering the geographic distribution for applying also is a must and in many situations a decision regarding patenting is taken for all four countries as if they are one united region. But how similar are the patent systems of these four economically comparable countries? Can any of them be taken as a basic one and others studied as non-essential deviations from it? The present article is an attempt to study the four patent systems on the main concepts that compose any modern patent system.

Although named as newcomers at the world development economies club BRIC countries can hardly be regarded as novices in the patent community — one the eldest Patent Laws belongs to Brazil which enacted it in 1809 being fourth in the world that time, even before the Declaration of its political independence from Portugal. Russia received its first patent law in year 1812 in a form of King’s Manifesto «On Privileges for Various Inventions, Discoveries and Handicrafts». Then goes India which enacted its patent legislation in year 1856, basing much on the concept and provisions of the British Patent Law of 1852. When enacting the first patent law India was still under the Company rule and itself the fact of understanding the necessity in the legislation that protects existing manufactures and encourages creation of new ones symbolize raising tendencies to establishing fair economic ruling and independence. Notably, in the mentioned two cases with Brazil and India enactment of patent legislation preceded substantial changes in political ruling of these countries — political independence of Brazil and Sepoy Mutiny in India that resulted in transferring power from Company rule to the British crown. China received its first patent act in year 1984 as one of the results of economical reformations started by the Chairman Deng Xiaoping.

The contemporary patent legislation of BRIC countries certainly differs a lot from the remarkable very first legal acts, with the only except of China which Patent Law was enacted in 1984 and now is in force in its amended version of year 2009. With other three countries continuity of patent law is more in the sense of retaining traditions rather than the original wording.

India bases its patent system on the Patent Act of year 1970 with amendments of 2005, Brazil Patent Law is of year 1997 with amendments of 2001. The Russian patent law now is accumulated in Part IV of the Civil Code that entered into force in year 2008. The legislation that mainly formed Part IV comprises many unchanged provisions of preceding legal acts — the Patent Law and the Law on Trademarks and Appellations of Origin of Goods of year 1992 and Copyright law of year 1993 that were enacted instead of cancelled Soviet legal acts when Russian Federation became an independent country after USSR was terminated in 1991.

A first look at any patent law always falls on the provisions that define what can be protected by a patent. TRIPS agreement in its Article 27 gave a universal definition which in most occasions is used as a yardstick to see how differently other legislations state patentable solutions. TRIPS definition keywords here are «product or processes in all fields of technology» and we find almost same wording in Russia, India and China patent acts in the articles where they define what can be protected as an invention. Brazil law defines a patentable invention even broadly and can be read as anything that satisfies the requirements of novelty, inventive step and industrial application. In practice, however, the Brazilian examination uses same concepts as «products and processes» for narrowing the definition towards same TRIPS model. All four laws contain exceptions from patentability naming solutions that are not recognized as inventions. These exceptions are classical and include discoveries, scientific theories, and mathematical methods; rules and methods of games and intellectual or business activities, computer programs, presentation of information; animal and plant varieties. But already starting from this point the patent systems of Big Four become showing their divergence, sometimes substantial.

Living beings therapy, surgery and diagnostics is a classical exclusion from patentability in all countries but Russia where patent protection can be obtained, for example for therapeutic use or a surgery method provided they are novel, inventive and industrially applicable. Such subject-matters certainly can be claimed in addition to medical equipment and preparations or even as a self-standing inventions, although enforceability of patents for such inventions shall be considered in each particular case in the view of definitions of non-infringing actions provided by the Russian patent legislation.

While Russian law introduces certain solutions as protectable despite their exclusion by other systems, the Indian law goes in other direction and further to the classical exclusions that are defined by essence of the excepted solutions excludes from protection inventions basing on their relation to atomic energy. This exception is worth discussing in detail because it was surprisingly dictated by the welfare of people in India, in other words by the same reasons that resulted in enacting India first patent law — exactly for the welfare of people. Indian Atomic Energy Act, 1962, was enacted to provide for the development, control and use of atomic energy for the welfare of the people of India as well as for other peaceful purposes.

With all that its Section 20 banned grant of patents for inventions which in the opinion of the Central Government are useful for or relate to the production, control, use or disposal of atomic energy or the prospecting, mining, extraction, production, physical and chemical treatment, fabrication, enrichment, canning or use of any prescribed substance or radioactive substance or the ensuring of safety in atomic energy operations. Needless to say that «are useful for or relate to» is a universal spell to stop anything even slightly about usefulness for or relation to. And that was indeed the purpose of mentioned provision. Further, the Atomic Energy Act empowered the Central Government to inspect any pending patent application for the banned usefulness or relation and instruct the Controller of Patents to refuse the grant of such application.

Section 4 of the India Patent Act that banns grant of inventions related to atomic energy was the result of an interim report submitted by Justice Ayyangar in April 1959 that further laid into a more comprehensive report forming the basis of the Patent Act of 1970. There may be a number of reasons that were guiding Justice Ayyangar towards requiring such exception but most apparent reason was the strategic importance of atomic energy for India in the late 50’s and assumption that it would be against national interests to grant patents to private parties, and especially — foreign ones, for such technologies. Section 4 retained its original wording after the India Patent Act was amended in 2005 and is currently acting.

It is unclear whether Indian law makers consider the circumstances that led to exclusion atomic energy associated inventions from protection as still existing. On one hand, the records of the Indian Patent Office do show patents and pending patent application standing in the name of the India Governmental Department of Atomic Energy and this is natural since India now is becoming more and more involved into the global nuclear commerce and cooperation, and any cooperation does presume equal treatment of national and foreign rights. On the other hand yet there are no clear guidelines that may serve as intermediate document in shift from total absence of recognition to at least partial recognition of atomic energy related solutions as inventions in India. And in the absence of such clear guidelines most Indian patent practitioner usually refrain from commenting whether or not a particular subject-matter may fall under the purview of «atomic energy» during further its examination on patent grant.

Utility models as a form of protection are granted in Brazil, China and Russia and are assumed to provide fast, effective and affordable in prosecution costs protection for limited type of protectable solutions for limited validity duration comparing to inventions. Such limitation shall be understood as a reasonable payment for fast and less strict examination, or even its absence with the patent proceedings nevertheless ending by grant of enforceable patent.

In line with such general idea of utility model all three BRIC countries limited the type of protectable solutions by apparatuses only. However, such limitation is clearly worded in the Russian Civil Code, while both Brazil and China legal acts define the protectable utility models on the first sight quite broadly. Brazil law states that utility model is an object of practical use, or part thereof, having a new form or arrangement. Such provision is to be interpreted in the way that form or arrangement can be attributed to apparatus-type solutions solely. Almost the same legal construction is used in the Chinese Patent Law which in Art.2 sets forth that a utility model is a product — what is broad enough, but then limits product to apparatus adding that the utility model shall be defined by «shape» and «structure».

Another limitation usually introduced by law to utility models is the patent term, which is normally shorter than for invention patents. In Brazil the utility model patent term cannot last longer than 15 years, in Russia — 13 years and in China — 10 years while maximum invention patent term for same apparatus-type solutions is 20 years in all these countries.

One of the mentioned benefits of obtaining utility model rights is shortened examination because of usual absence of consideration on merits of the claimed utility model. This is the scheme in China and Russia where utility model patents are granted after successful passing of formal examination which checks correctness of the application documents as well as admissibility of the claimed solution, i.e. whether it is of apparatus-type and not excluded from patentability. Another system exists in Brazil where substantive examination of utility models does exist and utility model applications do undergo substantive examination conducted by the Brazilian examiners. However, taking into account the current extremely long examination time for invention applications it may be expected that even with substantive examination utility models in Brazil are still the fastest track to obtain enforceable patent.

According to the Brazilian Patent Law a utility model shall be novel and industrially applicable uncommon or unusual improvement over the prior art comparing to non-evident or non-obvious as invention. Although such wording of the law was definitely intended to emphasize less inventiveness still inventiveness remains an important criterion for utility model to be considered as patentable. For Brazilian Patent Law it is purely correct to say that utility model needs to meet all its criteria of patentability to be granted, while in China and Russia it will be more correct to say that being granted, what happens without examination on merits, the patented utility model has good chances to sustain a patentability challenge in case it meets the criteria of patentability. In China such sustainable utility model shall be novel, inventive by its substantial features representing progress and industrially applicable, while in Russia utility model shall be novel by its combination of substantial features and industrially applicable.

Practice of obtaining utility model rights is very common in Brazil and China not only for local applicants but also for foreign individuals and corporations. In Russia still national applicants demonstrate incomparably higher interest in obtaining utility model patents than foreigners, although the current year shows some increase in foreign applicants seeking utility model protection in Russia. (This article is the first one in a row on this topic. Further we shall consider all the five BRICS countries including South Africa).