The Brazilian PTO establishes the Project to Fight Patent Examination Backlog

12 . July . 2019 |

The Brazilian PTO (INPI) published on July 9th Resolutions Nos. 240/2019 and 241/2019, which officially initiate the Project to Fight the Patent Examination Backlog, establishing practical measures to substantially reduce the queue of patent applications waiting for technical examination.

These measures consist of the publication of two new Preliminary Official Actions which, by the simplified content – without technical analysis – aim to solve, within the next 2 years, 80% of the queue of pending patent applications. One of the Preliminary Official Actions applies to applications that already have prior art searches performed by Patent Offices in other countries, from International or Regional Organizations, while the other applies to applications without searches already conducted – therefore, in general, to applications filed directly in Brazil. In the first case, the content of the report will be limited to pointing out the documents already retrieved in said searches. In the second case, the INPI will conduct the searches and issue a report with the documents retrieved. In both cases, the applicant of the patent application – and not the INPI – will be responsible for the initial technical analysis of said documents and the presentation, within 90 days, of arguments and/or amendments to the application in order to make it patentable, in accordance with the Brazilian current legislation. Once the Preliminary Official Action has been answered, the INPI will proceed with the examination of the application.

It is worth pointing out that both Preliminary Official Actions apply to patent applications not yet submitted to the first technical examination, not subjected to a request for priority examination in the INPI, not containing third-party observations, including by ANVISA (Brazilian National Health Surveillance Agency), and with a filing date until December 31, 2016.

Regardless of this measure recently adopted by the INPI to overcome the backlog, it is worth ratifying that the applicant may accelerate examination by using other channels, such as the PPH examination programs with other partner offices: USPTO (American), JPO (Japanese), EPO (European), SIPO (Chinese), UKIPO (from the United Kingdom), DKPTO (Denmark) and PROSUL (Brazil, Chile, Argentina, Colombia, Ecuador, Paraguay, Peru and Uruguay).

For further information, contact:

Ana Paula Celidonio

Isabella Katz Migliori

Gustavo da Costa Simões

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