Brazil on its way to eliminate the existing patent backlog

Por Gabriela Salerno -

12/07/2019 - Brazil on its way to eliminate the existing patent backlog

For years, the Brazilian Patent and Trademark Office (BPTO) has been struggling to find an effective solution to tackle the huge backlog in the examination of patent applications. There are currently around 200,000 patent applications awaiting technical examination according to data published by the BPTO in May 2018.

The industries most affected by this delay are pharmaceuticals and telecommunications, where a patent application can often take up to 13 years to be granted.

However, this scenario is now likely to change since the BPTO has just announced a project to tackle the patent backlog. The project aims to substantially reduce the number of pending patent applications over the next two years. Resolutions 240/19 and 241/19, published in the BPTO’s Official Bulletin no. 2531, establish the procedure to achieve this goal.

Resolution 240/19 regulates the issuance of Preliminary Office Actions (publication code 6.22) for patent applications with pending examination without prior art search performed by foreign Patent Offices, while Resolution 241/19 regulates the issuance of Preliminary Office Actions (publication code 6.21) using the result of prior art searches performed abroad.

For applications having prior art searches performed by other Patent Offices, the Office Action will consist of a search report limited to prior art documents cited abroad and a request to amend the claim set and/or submit arguments in accordance with these documents. Once a response is submitted, the examination will continue and the examiner will be limited to an analysis of the previously cited documents – no additional search will be performed. If the amendments and arguments are considered suitable by the examiner and the specification, claims, etc. of the patent application are in accordance with Brazilian practice, the application will be allowed.

Failure to submit a response to these Preliminary Office Actions within the ninety-day term will cause the application to be shelved without any possibility to reverse said decision.

The issuance of Office Actions under code 6.21 is expected to begin on July 23, 2019, while the issuance of Office Actions under code 6.22 is expected to begin on August 06, 2019.

It is still too early to foresee the effectiveness of this project, but the urgency to have new measures to reverse the current situation is undeniable. Since Brazil is a relevant market for the vast majority of industrial sectors, a solution is needed so that patent applicants can have their inventions duly protected within a reasonable timeframe.

Por Gabriela Salerno