In an attempt to reduce the current backlog, the Brazilian Patent Office (BRPTO) released on January a pilot program that established a preexamination office action. Such office action did not comprise any allegations, objections or rejections raised by the examiner, but only the main prior art references cited during the examination proceedings in other jurisdictions (mainly US, EP and JP).
Then, the applicant was invited to reply this office action by conforming the Brazilian application to the allowed set of claims of its counterparts. It is important to observe that this preexamination office action did not skip the regular examination proceedings. Therefore, the applicant had further opportunities to defend its application.
The pilot program was carried out from January to March and it will be resumed, as stated the BRPTO in a public notice last week. The Patent Office considered that the outcomes were significantly effective. For example, around 22% of the applications that received the preexamination office action were abandoned. Moreover, around 56% of the responses contained set of claims conformed to EP or US counterparts.
The Brazilian Patent Office did not specify a term so that the preexamination pilot program will continue until the BRPTO decides to cancel it. Moreover, it should be noted that all applications filed until December 31, 2016 are eligible to have an office action issued under the preexamination program.
Furthermore, it is important to note the following remarks regarding this preexamination office action:
1. The deadline to file a response is 60 days from the publication of the office action;
2. If the office action is not responded, the application will lapse and there is no appeal available before the BRPTO;
3. The applicant is very much free to choose how to respond the office action:
• it is not mandatory to conform the set of claims to the counterpart application;
• the applicant can file only arguments against the prior art references; and
• it is possible to file a simple response stating that the applicant would like to await the regular examination to present its arguments and/or amendments.
4. If the applicant wishes to amend the claims according to a counterpart application, the Brazilian practice should be observed (i.e., it is not possible to broaden the scope of the claims).