Brazil’s brand-new program to get rid of the patent backlog

by | Feb 21, 2021 | Articles, Intellectual Property, Patents, Prosecution

The Brazilian PTO has introduced its long-awaited plan to solve its patent backlog, a project called “Preliminary Standardized Office Action Program”. The idea is to reduce the backlog by 80% over next 2 years – after which the PTO estimates to take less than 24 months to examine new applications.

In recent years, the PTO committed itself to reduce the backlog through several strategies, such as hiring examiners and creating fast-track programs. With those efforts, backlog was significantly reduced to about 8 years, but it is still a major problem to be addressed, which motivated the new program, that divides applications into three groups:

Group I – applications with foreign counterpart already examined;
Group II – applications with no foreign counterpart examined;
Group III – applications subject to oppositions, fast-track, already examined by the PTO or Brazilian FDA, or filed after December 31st, 2016.

Regarding Group I, PTO publishes a standardized office action listing the prior art references identified by a foreign patent office. For Group II, PTO carries out a search and publish a standardized office action just listing prior art found. In both cases, applicants have 90 days to respond, otherwise applications are dismissed with no right to appeal. Group III follows regular examination.

Standardized office actions bring no technical comments on patentability or formalities. They simply contain a list of prior art: applicants should amend the claims and/or present arguments. Further technical opinions may be later issued on patentability or formalities; however, they are limited to the prior art listed before.

There is an inescapable atmosphere of enthusiasm amid the industry with the new program, as it seems to be a game changer for Brazil. If the goals are achieved, the Brazilian PTO will be able to stand on equal footing with its foreign counterparts with regard to the average patent examination time.


Article published in the Managing Intellectual Property, read here.

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