BPTO defines as permanent the patent pre-examination program, as an additional measure to reduce the backlog

The Brazilian Patent and Trademark Office (BPTO) – Instituto Nacional da Propriedade Industrial (INPI) – published on October, 30th 2018 the Resolution Nº 227/2018 turning the patent pre-examination as a permanent program. This program consists on the issuance of an office action listing the prior art documents cited during the examination of counterpart applications of a Brazilian patent application. This measure aims to speed up the examination of patent applications and reduce the current backlog.
BPTO will select the patent applications meeting the following requirements to be included in this program:

1. Substantial examination not started by BPTO;

2. No request of priority examination filed for any of the current programs offered by BPTO;

3. No third-party observations or subsidiary opinion submitted by ANVISA (Brazilian FDA); and

4. Having counterpart application already examined in other countries by Patent Offices or International or Regional Organizations.

For those patent applications meeting all the above requirements, the BPTO will issue an office action requesting the applicant to amend the claims according to the prior art documents cited during the examination of the counterpart applications. The failure in replying the office action within 60 (sixty) days will result in the lapse of the application.

The presentation of amendments is conditioned to the Brazilian rules and if such amendments increase the number of claims, the payment of complementary examination fees is mandatory. After the presentation of response, The BPTO is allowed to perform new searches or issue office actions if necessary.

The adoption of this patent pre-examination program results from the success of the pre-examination pilot program, started on January, 2018 and extended on June 2018.

About the pre-examination pilot program

The BPTO published on January 16th, 2018 the beginning of a pre-examination pilot program, in which the results of the counterpart searches would be considered on examination of the Brazilian patent application. This pilot program was limited to a maximum of 40 patent applications per technical area of examination, and office actions would be published during the three following weeks from the publication of the pilot program, by the weekly BPTO Gazette (Revista da Propriedade Industrial – RPI).

A report with the partial results of this pilot program was published on June, 2018, informing that among the 680 patent applications selected by the BPTO to participate in this pilot program, 150 were lapsed due to failure in presenting response to the issued office action. According to this report, this abandonment rate is very similar to the commonly observed in the regular examination procedure, therefore, this amount of abandoned applications was already expected.

Finally, considering the total of final decisions issued by the BPTO for the applications that participated in the pilot program, for the partial results analyzed in this report, it was stated that the implementation of a permanent pre-examination program could generate an increase of 9,8% to 12,5% in the issuance of technical decisions by the BPTO and an increase of up to 17,2% of productivity in the technical examination of patent applications.

Should you have any question concerning the pre-examination program, please contact us.

Créditos: Anselmo Ribeiro Rodrigues