5 Ways to Maximize Patent Strategy in the BRIC Countries

In recent times, the “BRIC countries” have increasingly contributed to the majority of the world’s gross domestic product growth. The BRIC countries are made up of Brazil, Russia, India, and China, and are distinguished by their large, fast-growing economies. A sound intellectual property strategy in the BRIC countries, therefore, is crucial for any company aiming to capitalize on such growth. Here are five ways to maximize the effectiveness of your company’s patent strategy in the BRIC countries.

1. File Utility Model Applications

Utility model applications can be used to protect improvements related to the shape or structure of a product in Brazil, China, and Russia. Priority can be based on traditional patent applications filed in other countries, and the same priority rules apply as when filing a traditional patent application. Utility model applications are much less expensive to file, prosecute, and maintain, and are granted much more quickly than traditional patent applications.

In China and Russia, utility models are granted after formalities are approved without substantive examination. Substantive examination takes place if and when a utility model is challenged. In China, if formal requirements are met, a utility model will be granted four to five months after submitting a request for examination. In Russia, utility models are normally granted in four to six months from filing. In Brazil, utility models are substantively examined but still go through the Brazilian patent system two years faster than traditional patent applications.

While utility models require a level of inventiveness that is lower than a traditional patent, the protection they provide is not as strong as traditional patents. Also, the duration of protection is shorter; in Brazil, the duration of protection is 15 years from the priority date; in China, it is 10 years; in Russia, it is up to 13 years. Therefore, while the advantages of utility models are many, it is often desirable to protect an invention with a traditional patent when possible. However, because of double-patenting rules, the same invention cannot be protected by both a traditional patent and by a utility model.

One effective strategy is to file a traditional patent concurrently with a utility model. If and when the traditional patent application is granted, the utility model can be surrendered. If your invention is being practiced by others in Brazil, China, or Russia, this strategy can be extremely advantageous, as a utility model can be granted and enforced years before a traditional patent is granted.

2. Request Examination of Patent Applications as Soon as Possible in Brazil