New measures to decrease the patent examination backlog

On July 9, 2019 the Brazilian IP Gazette published Resolutions 240/19 and 241/19 about new measures to decrease the patent examination backlog.

Resolution 241/19 provides for a streamlined prosecution regime of pending patent applications having a search report issued by another IP office abroad. For such cases, Brazilian examiners will not perform additional prior art searches. Resolution 240/19 refers to patent applications without a search report abroad.

Under Resolution 241/19, applicants will be given an opportunity through a preliminary office action (code 6.21) to amend the Brazilian application in order to overcome any relevant prior art and/or to comment on the prior art. Amendments will obviously be required to comply with Brazilian law and regulations. E.g., therapeutic or business methods, plants, computer programs per se, living beings and parts thereof (cells) and substances isolated from nature are not patentable, claims must include a characterizing clause etc.

In particular, the scope of the claims may only be restricted, i.e., they cannot be broadened or altered (i.e., no new categories of claims) after the request for examination.

Following submission of amendments/arguments considered suitable by the examiner, the application shall be allowed.

Such preliminary office actions will not be issued in connection with patent applications:

1. already being examined,

2. the expedited examination of which has already been requested,

3. against which a third-party filed a pre-grant opposition, and

4. having an official BR filing date or international filing date after December 31, 2016.

The time limit for responding to the preliminary office actions is 90 days. Lack of response will result in the unappealable shelving of the application.

Resolution 241/19 also states that pending applications will not be subject to such preliminary office actions if the already available results of prior art searches do not identify relevant documents. Such applications may pass directly to grant or be subject to a regular office action.

Since the opinion issued by an examiner in another IP office will be taken into consideration (in a non-binding manner), adapting the claims in Brazil to those already granted elsewhere may improve the chances of allowance.

Preliminary office actions under the new regime will start being issued as of July 23, 2019.

As the plans imply that an extensive portion of pending applications will be examined in the next 2 years, depending on the size of an applicant’s portfolio the new procedure may result in the simultaneous issuance of office actions to multiple applications of that same applicant.In view of the relevant number of preliminary office actions that are expected to be issued, we kindly ask our clients to send their comments as soon as possible and well before the 90-day deadline.