Brazil patent examination: Defying the backlog
Despite a reputation for being slow to grant patents, Brazil’s IP office has introduced a number of programmes to expedite examination—with some positive results. Gustavo Sartori and Rana Gosain of Daniel Law.
For many years, the Brazilian Patent and Trademark Office (INPI) has been facing a huge backlog of pending patent applications. Currently, a patent application takes 11 years to be granted, on average; depending on the technical field, a grant decision can be even longer.
Needless to say this delay poses serious drawbacks and damage to companies’ enforcement strategies, assets value, and business planning, etc.
Given this serious situation, the INPI, over the last three years, has issued several fast-track programmes and has also adopted a pre-examination office action. Although these programmes do not solve the backlog problem itself, the fast-track programmes and the pre-examination office action offer some important options for applicants to try to overcome the long years waiting for examination.
The most important fast-track programmes are summarised in this article.
This programme is focused on expediting examination of patent applications that refer to environmentally friendly or sustainable technologies.
Currently, 80% of the green patent participation requests submitted to the INPI are allowed and the applications examined under this programme take two years to be granted (considering the timeframe from the application filing to the grant) which is, by far, much less than the 11 years the INPI takes to grant a patent under the regular examination process.
Moreover, some additional requirements are important to be observed when applying for this programme. For example, the set of claims must have no more than 15 claims and three independent claims. In addition, the patent application must have been published and the regular request for examination filed.
Therefore, given the success rate and the positive figures, the green patents programme is an interesting option for applicants. Moreover, and most importantly, the green patents pilot programme was transformed into a permanent filing option in 2017.
Patent Prosecution Highway
The Patent Prosecution Highway (PPH) is broadly known around the globe. Many important patent offices such as the Japan Patent Office (JPO), China National Intellectual Property Administration (CNIPA), US Patent and Trademark Office (USPTO) and European Patent Office (EPO) have PPH programmes.
In accordance with the worldwide trend, the INPI has also signed PPH agreements with some foreign patent offices to expedite examination of Brazilian patent applications with counterparts allowed or granted abroad. The PPH agreements in force in Brazil are the ones signed with the JPO, USPTO, EPO, CNIPA, UK Intellectual Property Office (UKIPO) and Danish Patent and Trademark Office (DKPTO).
The main difference between the Brazilian PPHs and the ones adopted by the rest of the world is that the Brazilian application must refer to one or more technical fields established in the PPH terms signed with each patent office. The technical fields of each PPH agreement are the following:
- JPO-INPI: information technology;
- USPTO-INPI: oil, gas or petrochemical;
- EPO-INPI: chemistry or medical technologies (except pharma);
- CNIPA-INPI: information technology, packaging, measurement technologies or chemistry (except pharma);
- UKIPO-INPI: information technology, telecommunications, semiconductors, machines, electric apparatus, energy or biotechnology;
- DKPTO-INPI: mechanical engineering, lighting, heating, weapons or blasting.
In addition to the technical field requirement in the PPH programme, it is mandatory that the Brazilian application be published and the regular request for examination filed—just as in the green patents programme.
Regarding the practical results, statistics show that the PPH programmes in Brazil are very efficient. For example, the INPI approves 87% of the PPH participation requests submitted, while 93% of the applications examined under PPH programmes are allowed. Moreover, the INPI takes approximately nine months to grant a patent under the PPH programmes, showing how advantageous it is to choose this fast-track option.
Therefore, PPHs in Brazil are another good alternative to expediting examination of a patent application and avoiding the backlog.
In addition to the PPH and green patents programmes, the INPI has other programmes for expediting examination. Some of them are summarised below.
The INPI has a specific programme focused on applications that cover products, pharmaceutical processes, equipment, materials and devices related to the treatment and/or prevention of neglected diseases, such as Chagas disease, dengue, dengue haemorrhagic fever, schistosomiasis, leprosy, leishmaniasis, malaria, tuberculosis, Buruli ulcer, neurocysticercosis, echinococcosis, yaws, fasciolosis, paragonimiasis, filariasis, cholera, helminthiases and intoxications or poisoning due to venomous or poisonous animals.
In the past, potential infringement of the claims of a patent application by an unauthorised third party was the only grounds for seeking priority or fast-track examination.
It continues to be on the list of grounds for fast-track examination. It is necessary to send a warning and/or cease and desist letter with confirmation of receipt to the infringer and then submit it to the INPI along with a brief demonstration of the potential infringement.
Senior citizen applicant
A senior applicant who is 60 years or more will qualify for priority examination. To qualify for this programme it is necessary only to attach a copy of the ID document of the applicant to the request.
Pre-examination office action
In addition to the fast track programmes, INPI implemented the pre-examination office action in January, 2018. It is a new kind of office action based on the indication of prior art references mentioned by foreign offices aiming at giving applicants the opportunity to amend their applications to mirror the claims granted abroad. It does not contain an opinion on patentability or formalities, as it is issued before the substantive examination takes place.
The INPI intends to accelerate the examination proceedings through this initiative and the results so far are positive. On average, after the pre-examination office action is issued, the application is allowed in four months—provided the applicant conforms the claims to the ones allowed abroad.
It should be noted that this is not a fast-track programme, since there is no need to make any requirement for expediting examination. It is an office action, as its name says and, therefore, it is necessary to file a response to avoid abandonment or shelving of the application.
If the applicant does not wish to amend the application or the file arguments, it is possible to file a simple response stating that it prefers to wait for substantive examination.
It is expected that with these initiatives adopted by the INPI, applicants will be able to pursue important commercial inventions through the several fast-track examination options and ultimately obtain valid Brazilian patents in record timeframes.
Gustavo Sartori is head of the mechanics team at Daniel Legal & IP Strategy in Rio de Janeiro. He joined the firm as a patent engineer in 2015 and has over 14 years of experience in IP. He has dealt with inventions in several technical fields such as mechanics and electrics. He can be contacted at: [email protected]
Rana Gosain is a senior partner at Daniel Legal & IP Strategy. With more than 30 years of experience in IP, he specialises in patents and industrial designs with experience in patent prosecution, litigation strategies, validity and infringement studies, and providing legal advice. Much of his work focuses on the pharmaceuticals and biotechnology areas. He can be contacted at: [email protected]
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