Brazil: Resolutions to reduce the backlog are finally published

  • 15 July 2019
  • New legislation

The Brazilian Patent and Trademark Office (BRPTO) published on July 09, 2019 Resolutions 240/19 and 241/19, which establish the criteria for the “preliminary office actions”. This project aims to reduce in 80% the backlog of pending patent applications (of about 160,000 applications) within the period of 2 years.

In order to achieve this goal, Brazilian examiners will mainly take advantage of searches previously performed during prosecution of counterpart cases for which a search report has already been issued

The “preliminary office actions” will be published in Industrial Property Gazette (RPI) under new dispatch codes 6.21 and 6.22.

The dispatch code 6.21 will be issued for applications, which already have search reports published by other Patent offices. The applications eligible to participate in this project:

  • should not have its technical examination initiated by the BRPTO;
  • should not have been accepted in any fast-track examination program;
  • should not have any observations filed by third parties or ANVISA; and
  • should have been filed until December 31, 2016.

This “preliminary office action” replaces the current “pre-examination report” and it is expected that it will accelerate the examination process, since no additional search will be performed by the Brazilian examiners.

The Applicants do not need to take any action, since the applicable cases will be published by the BRPTO following the queue of examination. Those “preliminary office actions” will start to be published as from July 23, 2019.

When replying to the preliminary Office Action, the Applicant will have the opportunity to amend the claims in order to distinguish the claimed invention from the cited prior art and/or to submit technical arguments demonstrating its patentability over the cited art.

The applications with a claim set duly adapted to the cited prior art will be allowed, if they are in accordance to the Brazilian IP Law. On the other hand, applications in which the claims were not adapted to the cited art and no arguments demonstrating the patentability were submitted, will be declared as rejected but there will be  the right to appeal against such decision.

The Applicant will have a 90 (ninety)-day term to respond to this “preliminary office action”, under the pain of definitive shelving of the application.

The dispatch code 6.22 will refer to those cases wherein no prior art searches are available from other Patent offices. These cases will follow the same rules defined above, with the exception of the prior art search, which will be performed by the Brazilian examiner. Those cases under dispatch 6.22 will be published as from August 06, 2019.

If you have any questions regarding this notice, please contact us at brj@clarkemodet.com.br.

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