Good news from the Brazilian PTO: update on the project to fight the patent examination backlog

After years debating how to manage the patent examination backlog in Brazil – at one point, the direct grant of almost every patent application standing in the backlog queue was considered – the Brazilian PTO (INPI) has finally taken action to deal with the problem, and in a very reasonable way.

The so-called “Project to Fight Patent Examination Backlog” created in mid 2019, and which began with the publication of two new Preliminary Official Actions with simplified content, has already shown results. The programme is expected to last for 2 years and solve 80% of the queue of pending patent applications. Such a goal can actually come true!

The simplified content of the Official Actions refers to either the citation of prior-art documents found in the searches performed by patent offices from other countries, when available; or when not available, the citation of prior-art documents found in the searches performed by the Brazilian PTO itself. Both of the Official Actions being issued without technical analysis or commentaries by the Examiner at this point.

Backlog reduced by almost 20% 

According to the most recent update on the programme, there has already been a reduction of almost 19% of the backlog queue – representing about 28.4k applications – within about 6 months of the project. Among these, about 5,000 have already been decided.

Although still being counted as being within the backlog queue, there are about 43.7k applications already in technical examination due to the mentioned measures.

Please refer to the chart below, representing the situation on February 4, 2020, for more details.

Source: adapted from the Brazilian PTO’s website: www.inpi.gov.br/menu-servicos/patente/plano-de-combate-ao-backlog

How to speed up your application

It is worth pointing out that, although the Applicants have a general tendency of responding to the Preliminary Official Action by simply conforming the set of claims according to the one granted in a corresponding country, there are pitfalls that the Applicant should avoid to actually take advantage of the simplified content and get a faster examination and grant. Thus, the Preliminary Official Action should be considered as an important opportunity for the case.

This means that the best way to respond to these Official Actions is not only to present an amended set of claims, if that is required, but to present arguments favourable to the patentability of the invention in view of the cited prior art.

It is important to check if the set of claims as granted elsewhere is also in agreement with the Brazilian PTO’s rules. This is because some understandings in Brazil may be different in comparison with other countries, in that the set of claims as granted in Europe or in the US may still not be in conformity with Brazilian IP Law.

Following the response, the examination will proceed and in case the response is considered as unsatisfactory by the INPI, the Rejection may be directly issued.

Although it is still possible to present an Appeal against the Rejection, some potential courses of action, such as dividing the application, will no longer apply. Therefore, the recommended course of action is the presentation of a careful and conscious response to avoid unpleasant surprises and to avoid leaving the Applicant with fewer chances of discussing the matter with the INPI.

Presenting a response in such a careful and complete way will help the Examiners and will not only speed up the grants, but indirectly work to solve the backlog in Brazil.

This “Project to Fight Patent Examination Backlog” is an important one, not only for obvious reasons, such as putting Brazil on the right track and moving towards the countries that have IP as a strategic tool for economic and social growth, but it clearly demonstrates that the INPI is duly capable of “making lemonade out of lemons”. This is because, in the absence of more financial resources, and with the urgent necessity to begin the movement and actually take equally urgent measures, the PTO implemented several internal and procedural practical changes.

These changes meant that with a good strategic plan, responsible adhesion of the PTO as a whole, regular follow-up and transparency, it was possible to circumvent the difficulties and still deliver a reasonable, serious and fair fight against the backlog.

Contrary to all odds, the recent numbers are showing that the courageous and good old-fashioned management approach is still valid.

Further information

Brazil is an important market and its economy is constantly improving. For many years, the examination backlog of patent applications has been an issue, especially for those dependent on the technical field of the invention.

Recently, the Brazilian PTO has started several projects, such as the ones just mentioned, to put the country on the right track.

The Institute is constantly publishing new measures that represent opportunities for the Applicants. To keep up to date with the Brazilian actions on the backlog matter and get the latest numbers on the Backlog Project, please access the Brazilian PTO’s website (Portuguese only).

To read the complete Resolutions on the Preliminary Official Actions, please access the link  above, where you will find links to English versions of the documents.

Next steps

Consult a Brazilian patent attorney on how to respond technically to the Preliminary Official Actions and to get advice on strategy for seeking protection of an invention.

How FICPI makes IP attorneys more effective

As a worldwide community, FICPI brings insights from its independent IP attorney members around the globe, enabling members to gain a wider perspective on developments outside their usual remit. A smoother process for patent grants will help businesses in the region and with economic interests in the region to further develop business opportunities and links.

Authors: Ana Paula Celidonio and Isabella Katz Migliori