Accelerating patent examination in Brazil
By Gustavo Sartori
One of the major concerns about Brazilian patent system has been the time it takes for obtaining patent protection or, in other words, the backlog. In 2015, the time an applicant had to wait for receiving a grant notice was around 10 years from filing, on average, and, depending on the technical field, this time could be even longer.
In order to overcome this situation, the Brazilian PTO has taken some initiatives to try to reduce the backlog and improve productivity, as for example hiring new examiners, reviewing internal procedure, and turning to electronic or digital proceedings as much as possible. However, on their own these initiatives are not enough to solve the backlog. Particularly, hiring the necessary amount of examiners to analyze the almost 200,000 applications waiting examination would be a problem, for two main reasons. First, Brazil is now recovering from a recession and the government does not have the necessary budget to hire more people in the next few years. Second, the examiners in Brazil are public employees, which means that they are appointed for life, so that if extra examiners are hired they cannot be fired as soon as the backlog is over and the PTO resumes analyzing the regular amount of applications it receives per year (approx. 26,000). Therefore, the PTO have been trying to find out solutions that do not involve significantly increasing the number of examiners.
Accordingly, the Brazilian PTO has released new programmes for accelerating examination and expanded some of the already existing fast-track options, as a way to test different options and to permit some applications to be examined first.
As these multiple expedited examination programmes are relatively recent in Brazilian practice, not everyone knows them very well and that is the reason it is worth providing a few comments on the main ones. This article will cover the main fast-track options made available by the Brazilian PTO.
Pre-examination office action
Since last year, the Brazilian PTO has begun to work in an initiative called pre-examination office action. According to this initiative, the PTO identifies which Brazilian patent application has a counterpart allowed or granted abroad. Then, a formal office action is issued on these applications, containing the prior art cited during the examination proceedings carried out in other jurisdictions by foreign patent offices. It should be noted that this pre-examination office action has no comments or remarks on patentability, but only a list of prior art references and a standard text inviting the applicant to respond.
The idea of such pre-examination office action is to make the applicant put the application in condition to be allowed before the substantive examination begins. Upon receiving this office action, the applicant has an opportunity to mirror the claims allowed or granted abroad, which can make the subsequent examination proceedings in Brazil very simple and fast. If the pre-examination office action is responded to with such claim amendments, the Brazilian examiners do not perform a deep examination, since they take advantage of the work made by other patent offices and they only check formalities of Brazilian practice. Consequently, by conforming the claims to those allowed or granted abroad, the Brazilian application can be allowed and granted within 3 to 6 months of response, on average.
This pre-examination office action was a very clever way the Brazilian PTO found out to eliminate part of the backlog. As mentioned, if the applicant responds with conforming claim amendments, the examination proceedings that take place subsequently are brief. In addition, since it is mandatory to respond this office action, a lack of response leads the application to dismissal without examination, and consequently takes the application out of the queue for examination. According to the PTO data, approximately 20% of the applicants do not submit a response, which is something positive for reducing the number of applications waiting to be examined.
Therefore, by using the examination results of other patent offices, the Brazilian PTO found a very intelligent way to expedite examination.
It should be noted that it is not possible to request the Brazilian PTO to issue this pre-examination office action, since it is something under the Patent Office discretion. It is the PTO who decides when and if this office action will be issued, according to their own criteria. Even if the applicant tries to anticipate things and file voluntary amendments to conform the claims to the ones allowed or granted abroad, the Brazilian PTO will not accelerate the allowance. In cases where the applicants tried this approach, the Brazilian PTO still issued a pre-examination office action and it was necessary to file a response simply stating that the current claims had already been modified according to a counterpart allowed application or granted patent.
Green patents program
Unlike the pre-examination office action, the green patents programme (and all the other that will be discussed hereinafter) requires filing a request to the PTO expedite examination.
Under the green patents programme, the examination proceedings are accelerated for those applications that refer to environmentally friendly inventions, for example the ones that are related to alternative sources of energy, sustainable agriculture, transportation, waste management and energy conservation.
As for the eligibility for this program, in addition to relating to a green technology, the application must contain no more than 15 claims and no more than 3 independent claims.
So far, the green patents program has proven to be very effective, as it takes around 1.5 years for obtaining patent protection from the time the green patents participation request is filed until the patent is grant.
Brazilian PTO has signed multiple PPH agreements with many different patent offices. As the PPHs in Brazil are pilot programs, most of them are restrict to certain areas of technology and have a limited amount of applications per month and per applicant that can participate in each of them. The brief list of the PPHs signed with the Brazilian PTO is the following:
USPTO: oil, gas, petrochemical and information technology;
EPO: medical technology and chemistry – except pharma;
JPO: Information technology, energy, machinery, audiovisual technology, telecommunications, digital communication, computing, semiconductors, polymers, metallurgy and materials, agrochemicals, microorganisms and enzymes – except pharma;
UKIPO: IT, telecommunications, semiconductors, machines, electric apparatus, energy and biotechnology;
SIPO: Information technology, package, measurement technologies and chemistry;
DKPTO: Mechanical engineering, lighting, heating, weapons and blasting; and
PROSUL: encompasses the patent offices from Argentina, Chile, Colombia, CR, Ecuador, Paraguay, Peru, Costa Rica and Uruguay – this program is not restricted to any technical field.
By using the PPH, not only the patent is granted faster, but the allowance rates are dramatically increased. If the PPH is used, the patent is granted within 0.7 years from the time the PPH request is filed and the allowance rate is around 90%, which is way higher than the average allowance rate of the Brazilian PTO, which is 69%, in average.
This fast-track option seeks to accelerates the examination of applications related to the treatment and/or prevention of HIV, cancer, neglected or rare diseases.
It is also possible to request fast-track examination, if a third party is reproducing at least one independent claim of a patent application. To request accelerated examination under this option, it is necessary to send to the third party a warning letter about this potential infringement. Then, a simple request must be filed before the PTO briefly demonstrating the potential infringement and attaching a copy of the warning letter.
It should be noted that not only the applicant can request fast-track examination under this option. If the applicant is accusing or warning someone about an infringement or a potential infringement, the one that is being accused can file a request before the PTO for fast-track examination (attaching a copy of the warning letter received).
Senior or ill applicant
There is a fast-track option for those applicants that are natural person over 60 years old and/or seriously ill. To qualify the application for this fast-track option, it is necessary to demonstrate the age of the applicant and/or her/his medical condition.
Other fast-track options
In addition to the fast-track options mentioned above, there are still some applicable for Brazilian small and medium companies, Brazilian R&D institutions (universities, for example) and for Brazilian priority applications that have an allowed or granted counterpart application in other jurisdiction (similar to the PPH, but without the restrictions of technical area).
Conclusion and next expected developments in the Brazilian patent system
These fast track options and other measures the PTO has been taking lately are producing now their first positive results. For example, the current backlog has been reduced from 10.1 years to 8.5 years, in average. Although such time is still very long, it is the first time in years the backlog has significantly been reduced, which demonstrates that the PTO is going on the right direction.
Moreover, as the pre-examination office action programme has been proven very effective in solving part of the backlog, the Brazilian PTO is now considering expanding it. According to the most recent declarations of PTO directors, the number of pre-examination office actions will considerably increase from May or June of this year. The PTO alleges that the expansion of the pre-examination programme has the potential not only to reduce, but also to eliminate the backlog within 2 years. This alternative should be possible and effective, since most part of the Brazilian patent applications (around 80%) are filed by foreigners and have counterparts also filed in other jurisdictions.
Although there is still no official notice about the expansion of the pre-examination office action, it is very likely that the PTO will continue expanding and creating fast-track options to reduce the backlog. Therefore, it has becoming important for companies that have business in Brazil to know more these fast-track options and use them accordingly.
 In most cases, the Brazilian PTO lists the prior art cited by the EPO and/or USPTO
 For example whether the amendments broadens the scope of the claims that were in the application when the examination has been requested
 The applicant is very much free on how to respond this pre-examination office action. It is either possible to amend the claims, presenting arguments, presenting arguments and amendments or simple stating that the applicant wishes to wait for the substantive examination.
Article published in the Cipa Journal. Read on https://www.daniel-ip.com/wp-content/uploads/2019/05/Cipa-journal.pdf