Combatting the backlog in Brazil – prioritising the examination of patent applications

Combatting the backlog in Brazil – prioritising the examination of patent applications

In recent years, the Patent Board of the Brazilian Patent and Trademark Office (National Institute of Industrial Property “INPI”) has implemented a series of administrative measures to reduce the period for examining patent applications to international levels, with the aim of stimulating innovation and ensuring the effectiveness of industrial property rights in Brazil. In this regard, possibilities for requesting a priority examination of patent application were opened for specific situations, which had a positive result in reducing to examination.

Specific situations & circumstantial reasons

The examination can be prioritised in situations related to the applicant, as follows: individual applicants who are over 60 years of age, when the applicant has physical or mental disabilities, or suffer from a severe illness, or even when the applicant is a micro or small company, a Scientific, Technological and Innovation Institution or a start-up.

The prioritisation of applications can also be requested due to their subject matter, including the matter involve green technology, treatments for specific diseases such as AIDS, cancer, and rare diseases.

There are circumstantial reasons that also allow examination to be prioritised, namely, in cases of patent applications related to technology available on the Brazilian market or when there is a threat of unauthorised use by third parties of the technology that is the subject matter of the patent application.

The Patent Prosecution Highway

The Patent Prosecution Highway (PPH) is one of the manners to expedite the examination of patent applications where, after a partner patent office deems the subject matter of a patent application patentable, it becomes possible to prioritise examination of the patent application for the same invention at the “INPI”.

Among the mechanisms for prioritising examination, the PPH, in addition to being the most used, has proven to be efficient and has allowed those applicants who seek speeding up patent prosecution procedures having their objectives met.

In 2021 and 2022, the INPI received around 1290 requests for entrance into the PPH programme and the average time between the submission of the PPH request and the publication of a first technical opinion was about 4 months. In addition, the average time between the submission of PPH request and the issuance of a final decision (approval or rejection) was about 6 months.

It should be noted that in the last two years, 96% of requests for entrance in the programme were accepted.

It is emphasised that Ordinance INPI/PR Nº 78/22 dated December 27, 2022, responsible for regulating the PPH within the scope of the INPI, afforded another benefit to applicants, the waiver of the need to submit the approval of the corresponding patent application provided that the Examiner of the Partner Patent Office is of the opinion that there is patentable subject matter in the claims.

In other words, any document that indicates the existence of patentable subject matter might be used, such as a European Search Opinion stating that the claims meet the requirements of novelty, inventive step and industrial application.

Additionally, the total limit of requests per International Patent Classification (IPC) per year has been increased from 150 to 250.

The INPI has a partnership with the following Partner Patent Offices: USA, China, Europe, Japan, United Kingdom, South Korea, France, Austria, Denmark, Sweden, Singapore, Portugal, Spain and PROSUL (Argentina, Chile, Colombia, Costa Rica, Dominican Republic, El Salvador, Ecuador, Nicaragua, Panama, Paraguay, Peru and Uruguay).

FICPI’s view and involvement

FICPI uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI Forums, Congress, committees and meetings are opportunities to gather insights from the international IP attorney community on any issue, whether it be practice-related or topics of patent and trade mark law.

Next steps

– Search for FICPI members in Brazil by navigating to the FICPI member directory and searching by country.

– Events such as FICPI’s 2023 Open Forum (4-7 October, London) offer the opportunity to attend technical sessions, and to meet and further discussions in congenial surroundings.