Is it finally time to say goodbye to the patent backlog in Brazil?

On July 9, 2019, the Instituto Nacional da Propriedade Industrial (BRPTO) published its long-awaited rules implementing an action plan to reduce the patent backlog that has plagued the office for many years.  As many readers are aware, on average, it has been taking BRPTO over 10 years to examine and issue patents in many technical areas, including pharmaceuticals and biotech inventions.

The action plan aims to reduce (i) the number of pending applications by 80% by 2021; and (ii) the time taken by the BRPTO to examine and grant a patent to only 2 years.  The new rules, Rule #240/2019 and Rule #241/2019, implement new Office Actions, similar to those in the pilot program for pre-examination Office Actions instituted in July 2018 (which were based on a prior art search report and a request for the applicant to provide amendments and/or arguments with respect to any prior art documents cited in such search report).

These measures were announced on July 3rd in Brazil as part of the Government’s action plan to generate growth and reduce bureaucracy.  These measures reinforce the BRPTO’s mission to stimulate innovation and the competitiveness of Brazil’s economic and technological developments through the efficient protection of intellectual property.

The implementation of this action plan is much less controversial than the proposed simplified procedures for allowance of pending applications for which public comments were requested on July 31, 2017. According to the BRPTO, this action plan has the advantage of not requiring any legislative change or additional cost to the BRPTO.  It also allows the institution to maintain its competencies and decision-making autonomy.

With respect to these new rules, Rule #241/2019 provides for a streamlined prosecution procedure for pending patent applications that have received a search report issued by a foreign patent office in a counterpart application. For such cases, Brazilian examiners will not conduct any additional prior art searching and will issue a preliminary office action (“Preliminary Office Action”) requesting the applicant amend its application to overcome any prior art and/or provide arguments on any prior art cited in the search report.  An applicant will have 90 days to reply to the Preliminary Office Action, which is not extendible.  Failure to respond to the Preliminary Office Action will result with the application becoming abandoned with no right of appeal.

Preliminary Office Actions will begin being issued as soon as July 23, 2019 for applications that meet the following requirements:

  • Have not yet been examined by the BRPTO;
  • Have not requested expedited examination under any of the BRPTO’s expedited examination programs;
  • Have not received any third-party observations or a technical opinion by ANVISA;
  • Have had a prior art search report issued by foreign patent office in a counterpart application; and
  • Have a filing date in Brazil or an International (e.g., PCT) filing date before December 31, 2016.

Additionally, if an application does not qualify for a Preliminary Office Action, any divisional application filed will also not qualify.

Other unique aspects of this program that readers should be aware of are as follows:

  • Technical opinions/Office Actions issued by the corresponding foreign patent offices will be deemed to be third-party observations by the BRPTO;
  • When the reply to the Preliminary Office Action includes amended claims that overcome the relevant cited prior art listed in the search report and conform to Brazilian practice, the application will be allowed by the BRPTO;
  • When the reply to the Preliminary Office Action does not include either an amended claim chart or arguments against the relevant cited prior art, the application shall be rejected by the BRPTO; and
  • If the search report from the foreign patent office does not identify any relevant prior art (e.g., only lists “A” references such as those in a PCT search report), the application may pass directly to allowance, or may receive a regular Office Action.

Rule #241/2019 revokes Rule #227/2018, which established the pre-examination Office Action program.

New Rule #240/2019 provides the examination procedure that will be used for pending patent applications that have not received a search report by a foreign patent office in a counterpart application.  For these applications, the BRPTO will issue an Office Action that will comprise a prior art search report and a request that the applicant amend its application and/or submit arguments in response to the prior art recited in the search report.  As with the Preliminary Office Action, an applicant will have 90 days to file a response to this Office Action.

With respect to practice tips, since the opinion issued by an examiner in a foreign patent office will now be taken into consideration in Brazil (albeit in a non-binding manner), applicants should consider if it makes sense to adapt their claims in Brazil to those already granted in another jurisdiction in order to improve their chances of allowance. Also, it is important for applicants to remember that the BRPTO has a strict practice concerning amendments, particularly after the filing of a request for examination.  After filing a request for examination, claim amendments are only accepted to (i) better define the claimed invention; (ii) correct translation errors; or (iii) restrict the scope of the protection. No broadening of the claims (after filing a request for examination) is permitted.

This post was written by Lisa Mueller and by Ana Carolina Correa of Licks Attorneys.