Speeding up the patent process in Brazil

by | Jul 28, 2021 | Articles, Brazil, Intellectual Property, Patents, Prosecution

A recent Supreme Court decision altered rules for patents in Brazil. While causing some consternation, the country’s patent office has worked hard to reduce its backlog, making the process increasingly faster and more straightforward

Brazilian laws governing patents have undergone a major change in recent months. Under previous rules, all patents in the country were valid for 20 years counting from the date of filing, or ten years from the date of approval — whichever comes last. This provision was originally brought in to mitigate the negative effects of delays in the patent analysis process, which in many cases can take well over ten years.

But this rule was challenged in a Supreme Court case and, in May, justices decided that the validity of patents ten years after approval was unconstitutional, neutering the law.

In the aftermath of the decision, Brazil’s patent authorities assessed how this legal change would be implemented. The revocation of ten-year deadlines after approval would not apply to patents already in force, with the exception of pharmaceutical and medical patents, and those which were subject to lawsuits questioning the ten-year deadline provision.

When deciding on the matter, Supreme Court justices noted that the ten-year term of patents after approval was purely a palliative measure, which got in the way of Brazil tackling the core of the problem — namely that patents take a very long time to obtain approval.

There is good news on this front, however, with the average time to approve patents falling from 9.5 years on average in 2015 to 6.8 years in 2021.

Credited with a large part of this improvement are the so-called “preliminary office actions,” implemented by Brazil’s patent office, the National Institute of Industrial Property (Inpi). Launched in 2019 with the bold target of reducing patent backlogs by 80 percent, the program is already more than halfway there, cutting the queue by some 65 percent so far.

The Inpi measure consists of a first office action without substantive analysis, containing only a list of prior art (evidence that inventions are already known) cited by foreign patent offices during the examination of corresponding requests in other countries.

The applicant may choose how to respond to the office action, but patent prosecution may be fast-tracked if the claims of the Brazilian application are in line with those allowed abroad. If no response is submitted, the patent application is lapsed with no right to appeal. Therefore, under the current system, most patents will be granted within ten months from the preliminary office action, reducing the impact of the recent Supreme Court decision.

That said, some applicants would be entitled to feel that waiting seven years for a patent is unreasonable and that faster processing is necessary. In this regard, there is more good news.

Brazil’s patent fastpass
Inpi offers a series of mechanisms to speed up the patent process, and eligibility requirements are liberal. The vast majority of applications are likely to fall under at least one of the patent office’s fast-track programs.

Inpi has signed multiple Patent Prosecution Highway (PPH) agreements with counterpart authorities, and the latest rules allow companies to file patents in one jurisdiction (office of first filing, or OFF) and carry out further examination in another country (office of earlier examination or OEE).

Therefore, if an application is first filed in Japan and a counterpart is filed and allowed in Europe, the applicant could use the European claims to file a PPH request to speed up the patent process in Brazil.

Patents concerning inventions which are produced, sold, imported to, or exported from Brazil are also given fast-track options, as are those which refer to green technology or the treatment of HIV, cancer, and rare diseases. And these are just a small sample of the opportunities available to patent applicants.

These mechanisms not only speed up prosecution, but also increase approval rates. Patents for green technology, for instance, have an approval rate of 60 percent and a timeframe of 379 days for analysis. PPH requests are even quicker, taking around 305 days, and 82 percent are approved.

Thus, while the Supreme Court’s decision to alter patent rules was met with much discussion, it is unlikely to have a drastic impact on the time it takes to approve patents in Brazil. The backlog is shortening continuously, and fast-track programs are widely available.

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Article published on The Brazilian Report.

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