PRACTICE AREAS

Firm specialized in intellectual property.

Services

PATENTS

Patents are an essential tool when protecting new products and technologies. At MNIP we are experts on handling the entire patent process, offering services ranging from the application draft and submission to BPTO to the very last post-grant opposition.

At MNIP, we put our techno-legal expertise at the client’s disposal. Through our technology mapping (including FTO, prior art search, patentability analysis, and so on) the client can acquire critical data to make well informed decision for his/her business. Our analysis takes into account company and technology benchmarking, commercial/technological opportunities, infringement risk, potential collaborators and any other information that may interest the client.

When it comes to foreign clients, MNIP provides a wide range of services and a multilingual team with vast experience in the PCT and Paris Convention systems. Moreover, we offer translation services suited for technical documents and patent applications intended for BPTO or international filing.

PATENTS SERVICES

Patentability analysis

Assessment of invention patentability. This analysis is based on the industrial property law criteria and INPI guidelines, and provides a technical report on the grant chances of the referred invention. This analysis includes a prior art search.

Prior art search

Search in patent databases to assess whether an invention meets the requirements of novelty, inventive step and inventive act as defined by law.

FTO

Search carried out in the BPTO patent database, with the goal to find out whether there are any third-party patents claiming the technology of interest in Brazil.

Nominal search

Search carried out in the BPTO patent database using the name of an applicant or owner. Especially interesting for competitors and technology mapping.

Patent application draft and filing

Technical draft of the specification, claims and abstract according to national legal guidelines, followed by the patent application filling with the BPTO.

Technical drawing for patent aplication

Preparation of technical drawings according to the standards defined by BPTO.

Opposition search

Search in patent databases aiming to find documents capable of impairing a patent grant or cancelling an already granted patent.

Suport to the technical examination

There are two types of supports to the technical examination: (1) positive supports, i.e. those that an owner or applicant may file in favor of his/her invention; (2) negative supports, i.e. those that an owner or applicant may present to prevent the grant of a third party patent application.

Reply to a non-final office action

After filing a patent application for an invention, it undergoes a long administrative process before its grant. During this process, BPTO may present non-final Office Actions, which relate to errors concerning the document format and standards. This service refers to the elaboration of technical responses to such non-final Office Actions.

Appeal against final rejection

Even after the Final Rejection of a patent application there are still actions to be implemented. The applicant or owner may file an appeal against the Final Rejection to request the reversal of the situation and obtain the application grant.

ANP

Or Administrative Nullity Proceeding, is a petition made to the BPTO to proceed with the nullity of a third-party patent granted in the previous 6 months.

Document translation

Translation of documentation intended for BPTO application filing , official BPTO communications and technical documents in general. Portuguese and English.

TRADEMARKS

Trademarks are one of the main assets of your company. Regardless of the industry you are in, trademarks play a pivotal role in brand valuation and market share consolidation.

At MNIP, taking care of your trademark is our specialty. We offer a complete service package including trademark registration and monitoring in Brazil, via BPTO, and in other countries, via Madri Protocol.

Our client portfolio includes big national and international companies from a diverse range of industries. from fashion to biotechnological drugs.

TRADEMARKS SERVICES

Identical search and technical opinion

Analysis of similar trademarks already registered followed by elaboration of an opinion on compliance with trademark registration legal requirements.

Application filing

Documents preparation and trademark registration application filing with the BPTO. Includes monitoring of the registration process and surveillance of conflicting trademarks until the final application grant.

Reply to a non-final office action

After filing a trademark application, it undergoes a long administrative process before its grant. During this process, BPTO may present non-final Office Actions, which relate to errors concerning the document format and standards. This service refers to the elaboration of technical responses to such non-final Office Actions.

Opposition against trademark registration

During the trademark registration procedures, any third party who has a legitimate interest in the trademark may file a petition to contest the validity of its registration. MNIP provides specialized services for the preparation of opposition, including interpositions and manifestations.

Appeal

Even after the final rejection of trademark application it is still possible to file an appeal against such rejection. With that, the owner can request the reversal of the decision and have his/her application grated.

ANP

Or Administrative Nullity Proceeding, is a petition made to the BPTO to proceed with the nullity of a third-party patent granted in the previous 6 months.

Expiry request application

Presentation of a trademark's extinction petition. Once a trademark is declared expired, it becomes available for registration by other companies.

Change concerning name and address

Change of the owner/applicant’s name and address, regardless of the number of processes involved.

Ownership transfer

Trademark Owner Change Request. The minimum value of the service includes up to 20 processes.

Official copy of registration certificate

Providing official documentation of registration of a trademark.

Registration of advertising expression

Filing of a slogan or phrase published in the media/advertising within an official registry.

Document translation

Translation of documentation intended for BPTO application filing, official BPTO communications and technical documents in general. Portuguese, English and Spanish.

Strategy analysis

Analysis and strategy elaboration for trademarks based on national legal criteria.

BIODIVERSITY

With the recent advances in biotechnology a surge in biodiversity-based products have hit the market. In Brazil, these products, and the research leading to them, must be registered at the National Genetic Patrimony and Associated Traditional Knowledge Management System (SISGEN) before commercialization and patent application, as set forth by Law 13.123 from 2015. MNIP has a team specialized in the registration of R&D projects and products involving biodiversity components. We provide technical support for SISGEN related affairs following the legal guidelines defined by Decree 8.772 from 2016.

BIODIVERSITY SERVICES

Pre-registration analysis

Technical and legal assessment of biodiversity access and existence of registrations requirements at the National Genetic Patrimony and Associated Traditional Knowledge Management System (SISGEN) from the Environment Ministry (MMA)

Benefit sharing assessment

Technical and legal assessment concerning benefit sharing requirements and conditions for products exploiting Brazilian biodiversity.

R&D project registration at SISGEN

Technical consultancy for registration of research projects involving elements of Brazilian biodiversity.

Product registration at SISGEN

Technical consultancy for registration of products resulting from Brazilian biodiversity.

LITIGATION

Our aim is to help clients manage risk and arrive at solutions that do not necessarily involve the Courts (pre-court settlements), always providing clients with practical and creative legal advice focused on their strategic and commercial objectives. We work in administrative litigation (Patent and Trademark Office), litigation and consultancy, in all spectrums of dispute resolution, from negotiation, mediation, conciliation, arbitration to lawsuits, in all levels. Formed by lawyers with over 15 years of experience and LL.M. abroad, we represent our clients in the most diverse areas of corporate law, especially in Intellectual Property, including enforcement, patents, trademarks, copyrights, trade secrets, domain names, software, data privacy and advertising.

LITIGATION SERVICES

Pre-litigation

Measuring risks (legal opinion) and suggesting the best strategy to settle conflicts, quickly and less costly, i.e., without going to the Courts/Judiciary, through notifications, meetings to negotiate a settlement agreement etc. Enforcement.

Administrative litigation

Preparation of all petitions and documents to attack or defend a trademark, a patent, an industrial design before the Brazilian Patent and Trademark Office. Procedure to cancel or transfer domain names (UDRP). Conducting proceedings on abusive or misleading advertising with the CONAR. Registration of copyrighted works. Procedure on counterfeit products before the customs authorities. Arbitration (national and international), conciliation and mediation.

Litigation

Taking all the necessary steps and actions for perfectly prosecuting a legal proceeding, in all levels (tribunals and superior courts), including, if the best strategy is to settle, negotiating an agreement. Our litigation team is specialized in all matters in respect to corporate law, notably IP disputes.

SUMMARY OF SERVICES​

PATENTS

  • Prior art search;

  • Patentability analysis;

  • FTO;

  • Patent draft and filing;

  • Administrative nullity proceeding;

  • Opposition search;

  • Appeal against final rejection;

  • Technical document translation.

TRADEMARKS

  • Identical search and technical opinion;

  • Application filing;

  • Opposition against trademark registration;

  • Appeal;

  • Administrative nullity proceeding;

  • Expiry request application;

  • Change concerning name and address;

  • Ownership transfer.

BIODIVERSITY

  • Pre-registration analysis;

  • Benefit sharing assessment;

  • R&D project registration;

  • Product registration;

LITIGATION

  • Pre-litigation;

  • Administrative litigation;

  • Litigation.