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Expediting the examination of your patent application

by Eduardo de Mello e Souza

June 01, 2011

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Brazilian IP regulations have specific provisions regarding the acceleration of patent examinations. Even if your particular case does not qualify for this fast track, there are still measures which can be taken in order to ensure that your application will be processed as fast as possible.

Applicants usually wish to know whether they still have the opportunity to amend their application or when they can expect their first action from the Patent Office. The former question gets a straightforward answer. As a general rule, voluntary amendments can be made up to the request for examination. There are exceptions should you wish to limit the scope of the claims of the application or correct typographical mistakes. Anything else is unlikely to be accepted and must be considered on a case basis. The latter question has no such simple reply.

The biggest culprit for the delay between an examination request and the time of the first action is certainly the backlog at the Brazilian Patent Office. This is being addressed by the Patent Office, with the continued hiring and training of new examiners and several other administrative measures. However, a resolution by the Patent Office (Nº 191/08) gives applicants and third parties the option to fast track the examination of a particular application. Third parties can make such request if they are accused of reproducing the object of the patent without authorization, while applicants can do it if one of the following conditions is met:
 

  • If the applicant is older than 60 years of age;
  • If the object of the application is currently being reproduced by a third party without the applicant’s permission; or
  • If the issuance of the patent is a condition for the applicant to obtain investment or financial aid from local development agencies or credit institutions.


Naturally, each party is required to provide proof of whichever condition is claimed. But, if accepted, acceleration in essence forwards the application to the front of the line, despite the backlog. This same resolution also allows the fast track of applications considered, by the Brazilian Government, to be of public interest or a matter of national emergency.

A secondary but no less important source of delays is the time between publication and response of the office actions themselves. Thus, it would be in the interest of a speedy examination to minimize the issuance of actions.

Obviously it is not possible to know a priori the examiner’s opinion on the patentability of a particular application. As such, we will always have to deal with unfavorable opinions, rejections, appeals and the like. However it is possible to take measures proactively to minimize formal actions.

Formal actions are those concerned with the adaptation of a particular application to local practice, which carry no objection to the substantive portions of the application. Simple things, like presenting the claims in two-part format (so called Jepson claims) including a characterizing expression, adapting the title of the application to correspond to the preamble of the independent claims and, if the patent includes drawings, including reference numbers in both the claims and the abstract. Such measures will certainly reduce the length of the examination.

Surprisingly, even though they are completely avoidable, formal actions regularly account for a significant percentage of the total number of patent related actions published in a typical office journal. These are known rules, which could be handled before the request for examination and thus would avoid the issuance of an action, and help the application move faster through examination.

Therefore, when considering the time elapsed before a first official action from the patent office on your applications, be mindful of the option to fast track the examination of your application. And even if your particular case does not qualify for acceleration, be sure to note the adaptations required by local practice. This will not only help speed up the prosecution of your patent application, but also assist the examiners in minimizing time lost in processing formal actions.

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Eduardo de Mello e Souza

Agente da Propriedade Industrial , Engenheiro de Controle e Automação

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