VZCZCXRO8921
PP RUEHRG
DE RUEHBR #1188/01 1651347
ZNR UUUUU ZZH
P 141347Z JUN 06
FM AMEMBASSY BRASILIA
TO RUEHC/SECSTATE WASHDC PRIORITY 5767
INFO RUEHRI/AMCONSUL RIO DE JANEIRO 2279
RUEHSO/AMCONSUL SAO PAULO 7196
RUEHRG/AMCONSUL RECIFE 4965
RUEHBU/AMEMBASSY BUENOS AIRES 4086
RUEHAC/AMEMBASSY ASUNCION 5497
RUEHMN/AMEMBASSY MONTEVIDEO 6315
RUEATRS/DEPT OF TREASURY WASHINGTON DC
RHEHNSC/NSC WASHDC
RUCPDO/USDOC WASHDC

UNCLAS SECTION 01 OF 02 BRASILIA 001188 
 
SIPDIS 
 
STATE PASS USTR -- SULLIVAN 
NSC FOR FEARS 
AID FOR LAC 
TREASURY FOR OASIA - DAS LEE AND DDOUGLASS 
USDOC FOR 4332/ITA/MAC/WH/OLAC/JANDERSEN/ADRISCOLL/MWAR D 
USDOC FOR 3134/ITA/USCS/OIO/WH/RD/SHUPKA 
USPTO FOR PINKOS 
 
SENSITIVE 
SIPDIS 
 
E.O. 12958: N/A 
TAGS: KIPR ETRD BR
SUBJECT: U.S.-Brazil IPR Discussions at the Bilateral Commercial 
Dialogue 
 
¶1. (SBU)  Summary.  On June 6, Secretary Gutierrez inaugurated in 
Rio de Janeiro the bilateral U.S.-Brazil Commercial Dialogue 
(septel).  At that event, US Patent and Trademark Office (USPTO) 
Deputy Steven Pinkos conducted an IPR Breakout session with 
officials from INPI (Brazil's Patent Institute) and the Ministry of 
Development, Industry, and Commerce.  During that upbeat hour-long 
session, INPI President Roberto Jaguaribe briefed USG officials on 
INPI's hiring initiative, its efforts to reduce the long 
patent/trademark backlog, and ongoing plans for training.  In 
addition to Jaguaribe, the Brazilian delegation consisted of Marcio 
Heidi Suguieda (Trade Advisor to the Ministry of Development, 
Industry, and Commerce), Carlos Pazos (INPI Director of Patents), 
Leopoldo Coutinho (INPI Coordinator for International Cooperation, 
and Marcus Vinicius Dudkiewicz (Dep. Coordinator for International 
Cooperation).  Steve Pinkos (Deputy Director USPTO), Dorian 
Mazurkevich (slated to become the USPTO attache in Sao Paulo), Rio 
de Janeiro Consul General, AmEmbassy Brasilia Econ Counselor, Rio de 
Janeiro FCS Commercial Assistant Patrick Levy, represented the USG. 
End Summary. 
 
¶2.  (SBU)  In the June 6 meeting, Jaguaribe made the following 
points: 
 
-- Hiring.  INPI has made good progress in hiring new examiners. 105 
of 350 new patent examiners are on board as well as 45 of 104 
planned new trademark examiners.  The entry process has been 
tortuous as INPI has had to get Executive and Congressional approval 
to create the positions and Finance Ministry and Planning Ministry 
approval to fill them and pay employee salaries.  While the number 
of examiners is increasing, keeping INPI at full staff is difficult 
as employees constantly depart the agency for higher-paying job in 
either the private sector or other government ministries. 
 
-- Training.  The new patent hires will be divided into two groups, 
with training of the first set to take place in August and the 
second in November.  On trademark, the new examiners will begin 
training in June.  Scheduling training has been problematic as it 
takes skilled examiners away from the patent/trademark examination 
process.  The EU, Germany, and England are lending a hand in the 
training process as Brazilian patent doctrine is modeled more along 
European lines than the US model.  INPI expects to host ten trainers 
from Europe who will stay in Brazil for 6 months.   In addition, 
INPI would welcome training TDYs from USPTO experts, for a minimum 
of two weeks (but preferably longer) in duration. 
 
-- Trademark Backlog.  The backlog stands at 600,000 or 6 years (as 
INPI receives 100,000 applications a year).  Currently, INPI has the 
capacity to deal with a backlog of about 150,000, so Jaguaribe has 
put extraordinary procedures in place. 
 
--  Paperless Processing.  Jaguaribe's solution has been to simplify 
trademark examinations through paperless processing.  This increases 
the risk of mistakes (and lawsuits) though he termed the results 
"quite adeduate."  Substantively, paperless processing means that 
INPI no longer checks the reliability of a petitioner's powers of 
attorney and whether a company is active in the area in which it 
seeks the trademark -- both legal requirements 
 
--  Initial Pilot Program.  Under the initial paperless pilot 
program, 30 of INPI's best examiners multiplied their trademark 
processing productivity 10-fold.  This cohort has closed 70,000 
cases so far this year -- with 300,000 expected to be closed by 
year's end.  Paperless processing is not appropriate for cases where 
a party has opposed a trademark application, Jaguaribe stated, as 
these cases (18% of the total, or about 120,000) are more complex. 
Of the 480,000 unopposed cases, INPI estimates that about 240,000 
are likely no longer of interest to the petitioner given the 
extended period of time during which these applications have 
remained pending.  So after it has fully implemented paperless 
processing (in June/July 2006), INPI plans to contact applicants to 
find out if they want to proceed with their trademark petition. 
 
--  Outlook on Trademarks.   While he acknowledged that there may be 
some legal problems associated with this approach, Jaguaribe 
 
BRASILIA 00001188  002 OF 002 
 
 
indicated that he planned to face them when the time came.  He 
forecast that by November 2006, INPI would be dealing with trademark 
applications filed this year.  Overall, Jaguaribe opined that 9 
months was the floor under which INPI would not be able to further 
reduce the backlog. 
 
--  Patent Backlog.   The backlog on patents currently stands at 
130,000; in 80,000 cases petitioners have requested an exam but INPI 
has not yet been able to look at their applications.  Presently, 
INPI has the capacity to close 13,000 to 14,000 cases per year, 
though as the agency gets new examiners on board this total should 
rise to 25,000 in 2007, 36,000 in 2008, and 40,000 in 2009.  Given 
its efforts to increase its corps of examiners, INPI anticipates 
that it will be able to reduce the patent backlog to 40,000 within 3 
years.  Average waiting time for a patent is currently 5 years, 
although in some areas it is higher (6 years in metallurgical cases 
and 10 years for electronic cases).  Given legal requirements and 
legislatively mandated review periods, it will be difficult for INPI 
to drop below a 4 year waiting time. 
 
--  Shortage of Qualified Patent Examiners.  INPI believes that in 
key fields it needs to increase its stable of qualified examiners. 
For instances, in the electronics field, it needs to increase from 8 
examiners to 70;  in the telecom area it has two qualified examiners 
and in physics it has no one.  Jaguaribe reiterated his request for 
USG TDY training, specifically to help in those areas where INPI 
expertise was wanting (i.e., electronics, telecom, physics as well 
as nanotechnology, chemical, and biotech). 
 
¶3. (SBU)  USPTO Deputy Director Pinkos noted that his agency had 
recently established a Global Intellectual Property Institute whose 
mission was to train foreign government officials on all aspects of 
IPR, including patent/trademark administration and enforcement. 
Hiring was a challenge as well for USPTO, he added, though that 
agency had experienced a great deal of success in augmenting its 
workforce by increasing opportunities for telecommuting.  Pinkos 
stated that USPTO would soon have an attache posted at the U.S. 
Consulate in Sao Paulo who would serve as an in-country liaison on 
the full range of IPR issues, including technical assistance and law 
enforcement training. 
 
¶4.  (SBU)  This cable was cleared by USPTO prior to transmission. 
 
Chicola