Brazil: New programme aims to solve patent backlog

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Brazil: New programme aims to solve patent backlog

Sponsored by

daniel-400px.png

The Brazilian Patent and Trademark Office (PTO) has introduced its long-awaited plan to solve its patent backlog, a project called the "Preliminary Standardised Office Action Program". The idea is to reduce backlog by 80% over the next two years – after which the PTO estimates it will take under 24 months to examine new applications.

In recent years, the PTO has committed itself to reducing the backlog through several strategies, such as hiring examiners and creating fast-track programmes. With those efforts, backlog was significantly reduced to about eight years, but it is still a major problem that needs to be addressed. This problem is the reason behind the new programme. This divides applications into three groups:

Group I – applications with a foreign counterpart already examined;

Group II – applications with no foreign counterpart examined;

Group III – applications subject to oppositions, fast-track, already examined by the PTO or Brazilian Food and Drug Administration (FDA), or filed after December 31 2016.

Regarding Group I, the PTO publishes a standardised office action listing the prior art references identified by a foreign patent office. For Group II, the PTO carries out a search and publishes a standardised office action just listing prior art found. In both cases, applicants have 90 days to respond, otherwise applications are dismissed with no right to appeal. Group III follows regular examination.

Standardised office actions come with no technical comments on patentability or formalities. They simply contain a list of prior art: applicants should amend the claims and/or present arguments. Further technical opinions may be later issued on patentability or formalities. However, they are limited to the prior art listed before.

There is an undeniable atmosphere of enthusiasm in the industry regarding the new programme, as it seems to be a game changer for Brazil. If its goals are achieved, the Brazilian PTO will be able to stand on an equal footing with its foreign counterparts in relation to the average patent examination time.

ricardo-nunes.jpg

Ricardo D |Nunes


Daniel Legal & IP Strategy

Av. República do Chile, 

230, 3rd Floor

Centro, Rio de Janeiro 

20031-170, Brazil

Tel: +55 21 2102 4212

www.daniel-ip.com


more from across site and ros bottom lb

More from across our site

Exclusive data and in-house analysis show that law firms should work smarter, not harder, to ensure their communication has greater impact on clients
The tie-up, which will create a firm with a combined revenue of around $2bn, will add around 10 US-based partners to Herbert Smith Freehills’s IP offering
The High Court’s decision in WaterRower v Liking could have signalled the start of a new approach to determining whether designs can benefit from copyright protection
Maohua Wang, head of the IP group at King & Wood Mallesons in China, explains how the firm’s Eversheds deal affected the IP team and how his team meets clients’ litigation needs
Firms that advise generics businesses reflect on whether they’re seeing more aggressive tactics from innovators and how they’re managing their practices
Suspicions concerning AI in the legal space, and another copyright win for Ed Sheeran were among the biggest IP developments this week
Michael Sitzman, a life sciences litigator, explains how McDermott’s busy schedule at the UPC convinced him to join
The UK’s top court will hand down the decision next week, 17 months after hearing arguments in the crucial trademark dispute
Ceyda Maisami explains why HP is becoming more vocal in its SEP arguments and reveals why the company has transformed the way it engages with outside counsel
In the latest UPC update, we examine a ruling on director liability, another on the Gillette defence, and look ahead to cases concerning medical devices
Gift this article