Is this really the end of the Brazilian Patent and Trademark Office’s patent prosecution backlog?

Is this really the end of the Brazilian Patent and Trademark Office’s patent prosecution backlog?

In the past years, Brazil became famous (or infamous) for its incredible delay in prosecution patents applications. Anyone who has tried to obtain a patent protection in the country became almost immediately aware that the Brazilian Patent and Trademark Office (BPTO) takes a long time to issue an allowance or rejection decision.

Among the 28,469 patents of invention granted in Brazil between 2014 and 2019, 62% (17,635) took more than 10 years from the filing date to the final decision(1).

It is worth clarifying that, in Brazil, the term of protection of patents of invention is the longest term between 20 years from the filing date or 10 years from the date of grant, based on article 40 of the local IP Law. So, at least, the patentee will have a minimum 10-year term of protection for its invention, but the long prosecution of the patent application raises legal uncertainties and less investments in the country.

In view of this scenario, the BPTO has worked and continues to work extremely hard to reduce the backlog of unexamined patent applications through several strategies, such as hiring new patent examiners, developing fast-track programs and improving internal procedures.

As a fruit of such efforts, the BPTO has managed to become more efficient. For instance, the total of allowance or rejection decisions issued in 2019 was approximately 230% higher than in 2014 (more precisely, from 6,074 decisions in 2014 to 20,332 decisions in 2019). Also, the number of patent applications that remain to be decided decreased for the first time in 2017 and again in 2018.

Despite a clear improvement in BPTO’s performance, a definitive and fast answer to address the patent backlog was still necessary.

In view of this, in July of 2019, the BPTO set a bold goal of reducing the backlog of unexamined patent applications by at least 80% until 2021. In order to achieve it, the BPTO developed a so-called streamlined prosecution for the examination of patent applications.

This streamlined prosecution basically consists of the issuing of a preliminary and standardized office action with a call for amendments – preferably to mirror the claims already allowed by a foreign patent office –, and listing prior art references identified by a foreign patent office or, when there is no examined foreign counterpart application , identified by the BPTO.

The applicants have a 90-day term to submit a reply brief; otherwise the applications are dismissed with no right to appeal. After this reply, the BPTO actually starts its examination.

Almost one year since the issuance of the first batch of preliminary and standardized office actions – which happened on July 23, 2019 –, it is fair to question whether the BPTO will be able to achieve its goal of reducing the patent backlog by at least 80% until 2021.

According to the BPTO’s current numbers, the answer to this question could indeed be positive.

Up until June 2020, the BPTO issued preliminary office actions for 78,760 patent applications. This means that the BPTO issued on average more than 6,500 preliminary office actions per month and almost 1,570 preliminary office actions per week.

In March of 2020, the BPTO started to work 100% remotely in view of the COVID-19 pandemic. At that time, there was a sincere concern that this rhythm of analysis would be reduced and the whole strategy to end the backlog would be in jeopardy.

However, the pandemic scenario has had just a small impact on the numbers of preliminary and standardized office actions. There was a decrease of new publications in April and May of the current year, but nothing substantial taking into consideration the terrible effects of the COVID-19 in Brazil.

The good news is that, apparently, the BPTO is already back on the right track based on the numbers of June of 2020, which are similar to the ones of February of this year. In other words, the BPTO will probably continue to fiercely issue preliminary office actions and, accordingly, the efforts to eliminate the backlog problem should not be threatened.

The numbers also show that the BPTO is not simply issuing preliminary and standardized office actions. The BPTO is also issuing actual office actions on a good pace, after a substantive examination.

From July 2019 to June 2020, 23,052 office actions were issued, which represent an average of more than 1,900 office actions per month. On the other hand, 17,209 office actions were issued between July 2018 and June 2019 meaning that the BPTO has become 34% more efficient in issuing actual office actions, or, in other words, the BPTO is examining more applications in less time.

Again, the COVID-19 pandemic has had an impact in the BPTO’s performance – not substantial, but still an impact –, especially because the BPTO’s deadlines have been suspended from March 16th to May 31st, 2020 and were resumed on June 1st, 2020.

Despite this small retraction, it seems that the BPTO has already adjusted its pattern as the number of office actions issued in June is almost 40% bigger than in May.

The real and important improvement in the BPTO’s performance can be seen by the numbers of issued allowance and rejection decisions. From July 2019 to June 2020, the BPTO issued 26,084 decisions, which represent an average of around 2,170 decisions per month.

Said number represents a significant improvement of 50% in the number of allowance and rejection decisions issued by the BPTO in comparison to the number of decisions on the merits issued from July 2018 to June 2019, which was 17,204.

In other words, the BPTO in addition to starting the examination of more patent applications – issuance of preliminary and standardized office actions – and continuing to examine the applications – issuance of office actions –, is in fact rendering decisions.

Furthermore, the BPTO is not taking too long to issue a decision. The average time between the preliminary and standardized office actions and the allowance or rejection decisions is just around 6-7 months. Considering that the applicants have a 90-day term to reply to a preliminary office action, it is fair to say that the BPTO only needs 3-4 months to conclude examination once it starts.

As result, the BPTO has been able to reduce in 10% the number of patent applications with the examination requested and waiting the BPTO’s decision. According to the official figures, in February 2019 this number was 160,580, but it decreased to 143,353 in February 2020.

A further result of the BPTO’s improvement is that the backlog went down from an average of 10 years and 7 months in 2018 to 8 years and 5 months in 2020 based on the official numbers. Obviously, there are technical areas (e.g. agrochemicals, cosmetics and foodstuff) in which the prosecution is faster than others (e.g. pharmaceuticals and telecommunications).

Talking about pharmaceuticals, as the BPTO can only start its examination after ANVISA – the Brazilian health regulatory agency responsible for the approval and supervision, among others, of medicines – issues its consent, it is necessary to check ANVISA’s efficiency, as well.

Unfortunately, ANVISA is not on the same path as the BPTO. This is because the monthly average of decisions issued by ANVISA in the first half of this year is 293 whereas this average in 2019 was 566. The bright side is that there are alternatives to expedite this Agency’s analysis, such as fast-track examination and writ of mandamus.

Turning back to the BPTO, its streamlined prosecution for examining patent applications is indeed working because the ratio of patents granted with a 20-year term from filing date to patents granted with a 10-year term from date of grant has increased from 51.6% in 2019 to 66.1% in Q1/Q2 of 2020.

A further evidence that the BPTO’s hard work is paying off is that the ratio of patents granted with a 20-year term from filing date to patents granted with a 10-year term from date of grant is increasing.

In view of this analysis, we can finally affirm that the BPTO is at the right track to reach its goal regarding patent prosecution examination in Brazil, since there are clear signs that it will reduce the patent backlog in 80% in 2021.

(1) Unless indicated otherwise, all data provided in this article was obtained at Dannemann Siemsen’s internal system, which reflects all publications in the Brazilian IP Journal.