Farewell Brazilian Backlog: Brazilian PTO Introduces Standardized Office Action Program

“There is an inescapable atmosphere of enthusiasm amid the industry with the new program… If the goals of the program are achieved, the Brazilian PTO will be finally able to stand on equal footing with its foreign counterparts in the developed world with regard to the average patent examination time.”

Farewell to the Brazilian Backlog: Brazilian PTO Introduces Standardized Office Action ProgramThe Brazilian PTO has officially introduced its longed-for strategy to solve the enduring patent backlog problem in Brazil.  The plan is to reduce the patent backlog by at least 80% in the course of the next two years with the use of “standardized office actions” – that is, machine-made technical opinions that will simply point out prior art documents to be addressed by the applicant.  Once the backlog is finally dealt with — likely by 2021— the PTO estimates it will to be able to examine future patent applications within twenty-four (24) months.

A new hope at the Brazilian PTO

Previously on IPWatchdog, we wrote about the bold plan of the Brazilian government to get rid of the local PTO’s severe patent backlog by automatically granting over 200,000 patent applications with no examination whatsoever (click here).  In that occasion, as a last resource to cope with the huge backlog of the past years, the Brazilian PTO and the federal government had proposed a special procedure to automatically grant non-pharmaceutical patent applications that were not subject to pre-grant oppositions nor opted-out of the program by the applicants.

Naturally, this “emergency measure” came not without controversy.  It raised such an amount of concerns that the past administration eventually put it completely aside, leaving the problem unsolved for the next president.  Now, as part of the efforts of the current administration to modernize the Brazilian business environment – which included the country’s accession to the Madrid Protocol in early July (click here) – a new program has been announced with pomp and circumstance by the Brazilian Economy Minister, Mr. Paulo Guedes, and by the President of the Brazilian PTO, Mr. Claudio Vilar Furtado, during an official ceremony.

Rules were subsequently issued to implement the so called “Preliminary Standardized Office Action Program”, a groundbreaking project to speed up the analysis of 160,000 unexamined applications filed until December 31, 2016 with the use of “standardized office actions” that will simply point out prior art documents to be addressed by the applicant.

Brazilian backlog problem

For the past 15 years, Brazil has been enduring one of the world’s most severe patent backlogs. The problem has grown considerably after the enactment of the 1996 Patent Statute, which was adopted to make the country TRIPS compliant. The amount of patent filings skyrocketed ever since, as patents were now available to fields not previously patentable, such as pharmaceutical technologies. Hence, in a 15 years period, the amount of applications rose up to about 200%, without a correspondent increase in the number of examiners within the Brazilian PTO.

In recent years, the Brazilian PTO has committed itself to reduce the patent backlog through the implementation of many different strategies, including: (i)hiring new examiners, optimizing internal procedures, implementing new technology and IT solutions; (ii)creating several fast-track programs, that cover from green technologies to health-related applications, and signing multiple Patent Prosecution Highway (PPH) Agreements with patent offices around the world; and (iii)implementing the “Pre-examination Office Action Program”, taking advantage of the examination of foreign counterpart applications that were carried out by other patent offices abroad.

With all those recent efforts, the Brazilian PTO was able to significantly reduce the patent backlog, which went down from an average of 11.5 years to a little more than 8 years.  However, the backlog is still a major problem that had to be addressed, motivating the government to develop this recently announced new solution, which is heavily based on the mechanism of the current “Pre-examination Office Action Program”.

How the program will work

Basically, the program divides pending applications into three different groups:

Group I– applications for which a respective foreign counterpart was already examined;

Group II– applications that do not have a foreign counterpart examined abroad; and

Group III– applications that were subject to third party observations (pre-grant oppositions), to requests for inclusion into a fast-track program (PPH or Priority examination), that already received a technical opinion from the Brazilian PTO or from ANVISA (Brazilian FDA), or that were filed after December 31st, 2016, which are not encompassed by this new program.

Group III applications will be subject to regular examination, as they are not encompassed by the new program.  Accordingly, Group III will gather all residual applications, namely, those that do not meet the criteria to fall under Groups I and II.  The same goes for divisional applications: they will fall under Group III unless their parent applications comply with the criteria of Groups I and II.

For Group I applications, the PTO will publish a standardized office action simply listing the prior art references already cited by a foreign patent office in the prosecution of the corresponding foreign application.  On the other hand, for applications in Group II, the PTO will carry out a search and publish a standardized office action just listing prior art documents found on such search.  In both cases, applicants will have 90 days to present a response to standardized office actions, otherwise applications will be dismissed with no right to appeal.

The heart of the program relies on the fact that the standardized office actions will neither bring specific technical comments on patentability nor formalities regarding the claimed subject matter. They will merely present a list of prior art documents – it will be up to the applicants to address them as they see appropriate, either amending the set of claims and/or presenting technical arguments in view of the listed prior art.  The Brazilian PTO plans to issue an unprecedented 2,000 of these office actions per week, which will significantly increase the workload on both applicants and local IP firms.  For applications in Group I, if the response to the preliminary standardized office action does not contain neither amendments nor technical arguments, the Brazilian PTO will issue a rejection opinion with the right to appeal.

Notwithstanding the foregoing, it is important to highlight that the preliminary standardized office action will not always be the single or final opinion of the Brazilian PTO.  Further technical opinions may be later issued on patentability or formalities, including clarity, sufficiency of disclosure, and other issues.  However, substantive examination taking place after the issuance of these standardized office actions will be limited to the prior art documents listed on the standardized office actions, that is, there will be no additional searches at a later point.

What to keep your eyes on

There are some important observations and advices to keep in mind when responding to the standardized office actions, which should allow the applicant to benefit the most from the program and increase chances of obtaining the patent:

  • Consider amending the claims to mirror the ones already allowed by a foreign patent office, taking into consideration Brazilian rules regarding claim amendments and patentable subject-matter;
  • Pay supplementary examination fees if the amended set of claims contain more claims than the one for which the examination was requested;
  • In addition to amended claims, present a complete copy of the application containing specification, abstract, drawings, sequence listing etc, in order to make the process easier for the examiner;
  • Make sure to observe Brazilian rules related to claim amendments. After the request for examination, Brazilian PTO does not allow applicants to amend the claims to make them broader or to include new claim categories, that is, applicants can only amend the claims to make them narrower or clearer.

High hopes

There is an inescapable atmosphere of enthusiasm amid the industry with the new program, as it seems to be a game changer and a major positive development towards solving a critical issue for companies doing business in Brazil.  If the goals of the program are achieved, the Brazilian PTO will be finally able to stand on equal footing with its foreign counterparts in the developed world with regard to the average patent examination time.

The Author

Ricardo Nunes

Ricardo Nunes is a Partner with Daniel Legal & IP Strategy in their complex litigation department, and is licensed to practice in Brazil and in the State of New York. Ricardo has been working for more than a decade with high-stakes litigation, with particular emphasis on complex patent and regulatory disputes, and has experience with different technological fields, including chemical, pharmaceutical and biotech, as well as telecom, software, electronics, oil & gas and mechanical.

For more information or to contact Ricardo, please visit his Firm Profile Page.

Ricardo Nunes

Rafael Salomão Romano is a Partner with Daniel Legal & IP Strategy, in their complex litigation team. He has worked at the Legal Department of a major Brazilian media Corporation and as litigator in major Brazilian IP law firms. He holds a master’s degree in Regulation Law and a post-graduation degree in IP Law. Author of several papers on IP within renowned local law reviews and magazines.

For more information or to contact Rafael, please visit his Firm Profile Page.

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