August 21, 2020
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What is the patent backlog and what are its effects?
The backlog is the liability generated by the delay in examining patent applications filed at the BPTO (Brazilian Patent and Trademark Office) [INPI (National Institute of Industrial Property)]. This delay, a result of a lack of investments, incentives for innovation and effective public policies, made the examination of patents in Brazil among one of the most lengthy in all the member countries of the World Trade Organisation – WTO. The delay in examining patents poses a series of problems for those wishing to invest in technology in Brazil, since both the inventor and third parties who are possibly interested in exploiting the invention are not comfortable with a long period of uncertainty about the fate of their application for a patent.
The backlog and the term of a patent
In Brazil, the term of protection of patents for inventions is 20 years from the date they are filed or 10 years from date granted, based on Article 40 of the Industrial Property Law. Currently, with the large backlog, most patents in Brazil were granted with a 10-year term of protection. This lengthy processing of patent applications generates numerous legal uncertainties and less investments in the country.
Among the 28,469 patents for inventions granted in Brazil between 2014 and 2019, 62% (17,635) took more than 10 years from the filing date to the final decision.
What has the BPTO done to reduce the backlog?
Seeking to solve this problem of the backlog that has continued for decades, the BPTO started to invest in the hiring and training of new examiners, in cooperation with other patent offices around the world, as well as in the development of new technological tools to speed up the examination.
In addition, the BPTO developed the so-called patent backlog combat plan with an audacious goal of reducing the number of pending patent applications by 80% by 2021. This plan, which has been in operation since July 2019, has considerably reduced the delay at the beginning of the examination of patent applications filed in Brazil.
What is a preliminary office action, better known as order 6.21?
As one of the bases for the patent backlog combat plan, the BPTO instituted the preliminary office action, published in the Industrial Property journal under order code 6.21. This office action is not a technical office action, since it does not analyse the merits of the patent application (requirements for patentability – novelty, inventive step and industrial application). Its opinion basically takes advantage of the examination carried out in other countries and presents a search report citing documents found in other prosecutions in the same family as the Brazilian patent application.
What should be presented in response to a preliminary office action?
In this simplified process, the filer can make changes to reflect the claims already granted by a patent office abroad or contest the documents cited in the search examination. Filers have a period of 90 days to send the reply. Otherwise, applications will be rejected without the right to appeal. Following this reply, the BPTO will actually start examining the patent application.
What is the average time from the issuance of a preliminary office action until the decision on the patent application?
The average time between preliminary office actions and granting or rejecting decisions is around 6 to 7 months. Considering that filers have a period of 90 days to reply to preliminary office actions, it can be said that the BPTO is completing examinations between 3 and 4 months from their beginning.
How has the BPTO been coping with the backlog during the COVID-19 pandemic?
In view of the need for social isolation resulting from the COVID-19 pandemic, there was a fear that all these recent goals for the BPTO would be missed, since, as of March 2020, the BPTO has started to operate on a 100% teleworking basis.
However, the scenario of the pandemic has had only a small impact on the number of preliminary office actions. There was a decrease in new publications in April and May 2020, but nothing substantial taking into account the terrible effects of COVID-19 in Brazil.
The good news is that the BPTO has returned to its previous pace, based on the numbers for June 2020, which are similar to those for February of the same year. In other words, the BPTO continues to issue preliminary office actions and, therefore, efforts to eliminate the backlog problem have not been threatened.
What are the current numbers for the backlog in Brazil?
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 addition, from July 2019 to June 2020, 23,052 technical office actions were issued, which represents an average of more than 1,900 technical office actions per month. On the other hand, 17,209 technical office actions were issued between July 2018 and June 2019, which means that the BPTO has become 34% more efficient in issuing technical office actions, or, in other words, the BPTO is examining more patent applications in less time.
A real and important improvement in the performance of the BPTO can be seen by the numbers of granting and rejecting decisions issued. From July 2019 to June 2020, the BPTO issued 26,084 decisions, which represents an average of about 2,170 decisions per month. This number represents a significant 50% improvement in the number of grantings and rejections issued by the BPTO compared to the number of decisions issued from July 2018 to June 2019, which was 17,204.
How are the pharmaceutical cases with the implementation of the patent backlog combat plan?
In relation to pharmaceutical products, since the BPTO can only start its examination after ANVISA – the Brazilian health regulatory agency responsible for the approval and supervision of medicines – affords its consent, the Agency’s efficiency must also be ascertained.
Unfortunately, ANVISA is not on the same path as the BPTO. This is because the monthly average number of decisions rendered by ANVISA in the first half of 2020 was 293, while this average in 2019 was 566. The positive side is that there are alternatives to streamline the analysis of the Regulatory Agency, such as the acceleration of examinations and writs of mandamus.