New Resolutions 240/2019 and 241/2019

In view of the high volume of patent applications pending examination and aiming to reduce the backlog within a 2-year period, the Brazilian Patent and Trademark Office – BPTO (Instituto Nacional da Propriedade Industrial – INPI) published, on July 9, 2019, new Resolutions 240/2019 and 241/2019 that introduce two new types of preliminary office actions (technical opinions).

Resolution 241/2019 establishes the issuance of preliminary office actions for any patent application having counterpart applications already examined abroad. Based on the examination and documents cited abroad, the BPTO will issue preliminary office actions inviting the Applicant to make amendments to the claims of the application to place it in accordance with those of the counterpart application abroad, as well to submit arguments. The amendments should comply with the Brazilian formal requirements.

On the other hand, Resolution 240/2019 establishes the issuance of preliminary office actions for all the remaining applications without counterpart applications abroad. In this case, the BPTO will continue with its regular examination of the patent application based on its own search and on the examination of substantial and formal aspects of the application.

Below is a table summarizing the main aspects and requirements of the new Resolutions 240/2019 and 241/2019: