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Brazilian Patent and Trademark Office’s actions to fix patent backlog

Anyone who has sought to obtain patent protection in Brazil in recent years is aware that the Brazilian Patent and Trademark Office (BPTO) takes a long time – around 9-11 years on average[1] – to issue an allowance or rejection decision.

The BPTO’s delay – although somehow attenuated since Brazilian IP Law guarantees a minimum of 10 years of protection from grant[2] for a patent of invention – is indeed an issue, because often applicants are not comfortable with the long period of uncertainty.

Accordingly, BPTO has been working very hard to reduce the backlog of unexamined patent applications. The following numbers show that there is a real and important improvement in BPTO’s performance:

As a result, the number of patent applications that remain to be examined/decided decreased for the first time in 2017 and again in 2018:

Despite this clear efficiency improvement and the alternatives to mitigate BPTO’s delay – e.g. fast-track examination, Patent Prosecution Highway (PPH) programs and writ of mandamus –, a definitive and fast answer to address the patent backlog was still necessary.

As a result, BPTO created a streamlined prosecution through Resolutions No. 240/2019 and 241/2019, which is summarized in the following flowchart:

This streamlined prosecution will be available for those Brazilian patent applications (i) having a filing date up to December 31, 2016; (ii) not yet under examination; (iii) not included into a fast-track program; (iv) with no third party observations; and (v) with no ANVISA non-binding patentability opinion[1].

Based on BPTO’s forecast, about 2,000 preliminary office actions should be issued per week resulting in an 80% reduction of the patent backlog within the next 2 years.

It seems that BPTO’s challenge will be to process the replies to the preliminary office actions as some sort of assessment on the merits is still required.

In our opinion, BPTO’s workforce is up to the task. In 2018, BPTO issued 18,405 office actions and 16,218 allowance or rejection decisions. Therefore, assuming that BPTO is able to double its performance in terms of issued office actions, it seems fair to expect the issuance of 60,000-70,000 decisions in the first year of the streamlined prosecution program. This improvement seems to be feasible, since the examiners will rely more extensively on search reports and opinions issued by foreign IP offices.

To sum up, there are clear signs that this new regime will steadily reduce the patent examination backlog within the next years.

 

[1] ANVISA is the Brazilian health regulatory agency responsible for the approval and supervision, among others, of medicines. In Brazil, according to article 229-C of the IP Law, a patent directed to a pharmaceutical invention should be granted after ANVISA giving its consent. For strategic therapeutic uses – e.g. HIV, cancer –, ANVISA is entitled to issue a patentability opinion.

[1] This time varies according to the technical field of the claimed invention.

[2] According to the Brazilian IP Law, an invention patent will have a term of 20 years from the filing date or of 10 years from the grant date, whichever expires later. For utility model patents, the term is the longest of 15 years from filing or 7 years from grant.

Author : Bernardo Marinho Fontes Alexandre and Gustavo de Freitas Morais

  • Bernardo Marinho Fontes Alexandre: Lawyer and Food Engineer – Federal University of Rio de Janeiro – with more than 10 years of experience in patent litigation and prosecution, and member of Dannemann Siemsen Institute. Email: balexandre@dannemann.com.br
  • Gustavo de Freitas Morais: Electrical Engineer and Lawyer, with specialization in Intellectual Property at the Franklin Pierce Law Center (EUA). Professor at the Post-Graduation Latu Sensu of the Fundação Getulio Vargas (FGV) and of the Law Superior School (ESA) of the Brazilian Bar Association (OAB/SP). Email: gustavo@dannemann.com.br

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