Priority Exam for Patent Applications: PTO Makes Changes and Expands The Participation by Interested Third Parties

Brazil´s Patent and Trademark Office (PTO) has made moves in recent months in a bid to reduce the huge backlog of patent applications exams.

Besides the Priority Exams Resolution for patent applications from 2013, the PTO recently announced the creation of the Green Patents Program and the Patent Prosecution Highway Pilot Program (PPH), which allows certain patent applications – within the requirements of previously established frameworks – to be examined in advance, ahead of older patent applications.

The PTO is also planning to set up a Task Force to reduce the backlog of patent application exams.

Although in theory these measures should be able to reduce the backlog of patent application exams, it is worth noting that only a few holders of patent applications will actually benefit. “Interested third parties” who want to see a patent application from “another depositor,” normally its competitor, examined quickly – so that strategic business decisions may be taken with the legal situation certain – will not be considered by these new PTO initiatives.

In fact, the Priority Exam Resolution of patent applications from 2013 foresaw only one situation in which an “interested third party” could ask for the Priority Exam for a patent application of “another depositor”. To do so, this “interested third party” had to prove to the PTO that it had been accused by the “other depositor,” of illegally reproducing the object of the patent application. Considering this case on its own, an “interested third party” could only act in a reactive way, asking for a Priority Exam of a patent application of “another depositor” as defense material, in situations in which its products, allegedly in violating the rules, were commercially being exploited.

Nevertheless, the PTO, still concentrating its efforts on reducing the backlog of patent application exams, has published a new Resolution on Priority Exams – Resolution nº 151/2015 – that, not only maintains all the possibilities foreseen in the 2013 Resolution, but has gone a step further by adding a new situation under which an “interested third party” could act in an active and/or preventive way and would have the prerogative of requesting the Priority Exam of a patent application of “another depositor” even without have been accused of the unwarrantable reproduction of the object of this patent application. Under this new possibility, an “interested third party” could ask for a Priority Exam of a patent application of “another depositor” providing it could prove to the PTO that it was the holder of a patent application or a patent that had been granted for a related technology (to the technology of the patent application from the “other depositor”), or even, itself be the holder of a related technology (to the technology of the patent application of “another depositor”).

As a formal addition, the “interested third party” still needs to show, through the presentation of supporting documentation for the technical exam, that the patent application of the “other depositor” is exempt from at least one of the requirements of the patentability.

RESOLUTION Nº 151/2015

Art. 2. – Can request the priority exam of patent applications:

(…)

III – third parties, proven holders of patent applications or patent or who hold the technology which is the object of the patent application.

Art. 5. – The following documentation should establish the request for the priority exam of the patent application:

(…)

VI – in the case foreseen in clause III of art. 2:

(…)

(b) through the presentation of supporting documentation for the technical exam, in order to show that the object of the patent application is state of the art.

This new situation foreseen in clause III of art. 2 of the Resolution in question, Nº 151/2015, is extremely interesting as it closes obvious existing loopholes in the 2013 Resolution, expanding the interest of an “interested third party” to act. If, in the past, an “interested third party” could only act when motivated by an accusation from the “other depositor”, an “interested third party” can now act in order to prevent an unfair interference in its operating market, or also, to offset the legal uncertainty brought about by the existence of patent applications with a similar content.

Although this new situation is extremely interesting, there is no doubt that the reading is extremely broad, leaving room for operating questions and possible interpretations that go against the PTO´s intentions to reduce the backlog of patent application exams.

A reading of the clause in question does not clear the situation up, whether, for example, if the patent application of the “interested third party” needs to be made before or can be made after the patent application of the “other depositor” whose Priority Exam is sought.

A preliminary analysis shows that this situation should only work well for the “interested third parties” which hold patent applications (or granted patents) prior to the patent application by the “other depositor” whose Priority Exam is sought. Therefore, this chronological situation would justify the legitimate interest by the “interested third party” in acting, as it would be trying to speed up the rejection of the patent application of the “other depositor” in such a way as to remove the legal uncertainty caused by the existence of patent applications of similar content. The “interested third party” could also emphasize its legitimate interest in acting, arguing, in the obligatory presentation of supporting documentation for the technical exam, that the patent application of the “other depositor” is anticipated by its own patent application or granted patent.

Nevertheless, the possibility introduced by clause III of art. 2 of the Resolution in question, Nº 151/2015, makes no mention of any time scale, allowing the possibility of an “interested third party”, even when it is the holder of a post patent application, being successful in its request for the Priority Exam of a previous patent application by the “other depositor”.

This situation allows the creation of unclear strategies that could damage the PTO´s aims to reduce the backlog of patent application exams. One could imagine, for example, the following fictitious scenario: The holder (A) of a patent application (B) filed in 2010, whose exam should only occur in mid-2018, could use a kind of proxy (C) to file a patent application (D) in 2016 and, subsequently, acting as an “interested third party”, this proxy (C) could request the Priority Exam for the patent application (B) of the holder (A) based on its patent application (D).

As the text of clause III of art. 2 of the Resolution in question, Nº 151/2015, is too broad, it provides no kind of protection against this fictitious example given above. Not even the obligatory presentation of supporting documentation for the technical exam, cancels this fictitious scenario. Therefore, a number of means and arguments can be used to show, successfully or unsuccessfully, that a determined patent application is, allegedly, exempt from at least one of the patentability requirements.

A reading of the same clause also does not explain, for example, how an “interested third party” can prove to the PTO that it is the holder of technology related to the patent application of the “other depositor” whose Priority Exam is sought.

Should the “interested third party” show that it has already commercially exploited the object similar to the patent application of the “other depositor”? Should the “interested third party” show that it has an industrial secret, the object of which is similar to the object of the patent application of the “other depositor”? Should the “interested third party” show that it can license and reproduce technology belonging to others (international technology, for example) similar to the patent application of the “other depositor”? Should the “interested third party” show it has the technological know-how and productive capacity required for the technology that is the object of the patent application of the “other depositor”?

Although the PTO is constantly moving forward in terms of measures and initiatives to reduce the backlog of the patent application exams, we can see that, in practice, there are still many questions on how the new situation foreseen in clause III of art. 2 of the Resolution in question, Nº 151/2015, which regulates the possibilities of the Priority Exam within the PTO´s scope, will work.

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