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This is an update to our post on March 10, 2021.  On Thursday, March 11th, Reporting Justice Dias Toffoli requested that the Brazilian Patent and Trademark Office (BRPTO) respond to 13 questions considered relevant by the Brazilian Supreme Court in deciding the constitutional challenge involving Article 40 of the Brazilian Intellectual Property (IP) Statute (ADI 5529).  The 13 questions address the backlog and patent application pendency before the BRPTO.  In our opinion, the fact that Justice Toffoli has asked for input from the BRPTO indicates that the Brazilian Supreme Court is struggling with how to decide this case.

The Brazilian Supreme Court is scheduled to hear ADI 5529 on April 7, 2021.  Given that the hearing is less than a month away, Justice Toffoli’s request is quite unusual. Typically, requests such as this by the Supreme Court are made when a case is not yet ripe for a hearing.

The BRPTO has five working days (e.g., until March 18, 2021) to respond to Justice Toffoli’s questions.  The question posed by Justice Toffoli are:

  1. What is the current backlog of pending patent applications awaiting a grant or rejection decision based on Article 37 of the Brazilian IP Statute? The BRPTO should provide the total number and number by technical section (technological area).
  2. How many of the backlog patent applications awaiting decision (Article 37 of the Brazilian IP Statute) have been pending for more than ten years? The BRPTO should provide the total number and number by technical section (technological area).
  3. How many of the backlog patent applications awaiting decision (Article 37 of the Brazilian IP Statute) in the health sector (e.g., drugs, hospital equipment, etc.) have a potential indication related to COVID-19?
  4. What was the average time elapsed between the filing of a patent application and the BRPTO’s decision to grant or reject an application (Article 37 of the Brazilian IP Statute) in the last ten, five and one year(s)?  The BRPTO should publish the total number and number by technical section (technological area).
  5. Which technical sections (technological area) have applications with the longest average time between the application’s filing date and the BRPTO’s decision to grant or reject (Article 37 of Brazilian IP Statute) the application?
  6. By July 2021, is it expected that the BRPTO will be able to reduce the number of pending patent applications awaiting decision by 80% as estimated in the Plan to Combat Patent Backlog? So far, how much has this stock of patent applications have been reduced?
  7. Among the patents currently in force, how many (in total and by percentage) have been in force for more than 20 years from their filing date, in the case of utility patents, and 15 years, in the case of utility model patents (Article 40 of the Brazilian IP Statute)?  The BRPTO should publish the total number and number by technical section (technological area).
  8. Among the patents currently in force for more than 20 years, in the case of utility patents, and 15 years, in the case of utility model patents, how many (in total and by percentage) are held by public entities (including universities)? The BRPTO should publish the total number and number by technical section (technological area).
  9. Among the patents currently in force for more than 20 years, in the case of utility patents, and 15 years, in the case of utility model patents, how many have a potential indication related to COVID-19?
  10. How many examiners conduct patent examination? What is the average number of applications awaiting analysis per examiner? Based on the statistics produced by the World Intellectual Property Organization (WIPO), are there any international comparative performance indicators/parameters in this regard?
  11. Do the number of examiners correspond to the total number of vacancies for positions in the BRPTO? If there are open vacancies, how many are there? What are the reasons for those vacancies, and how long have they been open? When was the last public tender to fill vacancies at the BRPTO?
  12. Considering the Federal Court of Accounts decision in the Audit Process TC #015.369 / 2019-6 recognized that at that time the BRPTO lacked a technological solution in its operations that allowed it to manage the entire flow of patent applications, has the BRPTO, since this decision, adopted any measures aimed to implement a technological solution? Are there any ongoing administrative actions to develop a tool in this regard?
  13. Considering the Federal Court of Accounts decision in the Audit Process TC #015.369 / 2019-6, has the BRPTO provided, or is it providing, any standardization of patent examination procedures?

This post was written by Lisa Mueller and Rob Rodrigues from Licks Attorneys

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