The Patent Backlog in Brazil

By José Eduardo Filgueiras - eduardo.filgueiras@montaury.com.br

17/05/2019 - The Patent Backlog in Brazil

In recent years, the world patent system experienced a huge increase in patent applications, resulting in a struggle for worldwide patent offices to deal with the extremely high rates of growth. As a result, the patent system faced an overall rise in backlog numbers. While each country experiences unique problems related to backlog and pendency, a number of countries stand out in terms of

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As can be seen in the figure above, Brazil has one of the highest averages for patent examination time. This is a very dramatic situation, since patents directly affect important decisions, for example, which businesses get investments, which products get launched, whether a business gets off the ground, etc.

Further, backlog, and hence delay in processing patents, can increase the cost to the applicant and other innovators, as well as impact the value of patents to the applicants. It can also create uncertainty over the exact nature of the patent rights that will be granted, resulting in an innovation incentive reduction.

Also, it is important to point out that certain fields of technology tend to have even higher average grant times. In areas like “mobile technologies”, the average age of a granted application in Brazil is, astonishingly, 14.4 years.

The mobile communications technologies revolution is one of the most important technological developments of our time. In a few decades, this specific area has achieved remarkable technological advances, which led to the invention of a vast amount of new technologies, services and products, increasing productivity and pushing patent activity to a whole new level.

For example, according to the WIPO Statistics and EPO PATSTAT databases, Samsung Electronics CO., Ltd. alone had a total of 21,836 patent families between 2013 and 2015.

In order to exemplify the huge difference in patent prosecution between the Brazilian Patent Office and the main patent offices around the world, we analyzed the status of the Samsung patent application      BR112018012102-9 in Brazil (related to a flexible electronic device and operating method thereof) and compared it to some patent family documents in other offices. As is well known, flexible device innovation is one of the most important categories in the modern technological race within the mobile industry.

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During our search, we noticed that in the USPTO, the corresponding patent US10191574B2 has already been granted within about two years. In the EPO, within less then two years of examination, the patent application EP3341819 had several search reports, issued Examiners opinions, followed by an applicant reply, in which an amended set of claims was submitted.

On the other hand, Brazilian application BR112018012102-9 was filed on 13 Dec. 2016 and published  almost two years later on 04 Dec. 2018. However, neither a pre-examination office action nor a first office action was issued.

In order to solve this important problem, the Brazilian Patent Office has adopted a number of different measures to ensure backlog reduction over the past few years. These include a simple pre-examination office action, Patent Prosecution Highway (PPH) agreements, green patent fast-track programme, priority fast-track programme, information and communications technologies patent fast-track programme, micro and small enterprises fast-track programme, as well as others.

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Although the last Brazilian Patent Office  annual activity report revealed  that in 2018 there was an 8% patent backlog reduction, if compared to 2017, the cited measures are only new, and it has not yet possible to generate comprehensive results.

Marcos Jorge de Lima (Minister for Industry, Foreign Trade and Services) stated that “Although the numbers are encouraging, with the Brazilian Patent Office current operational capacity it is not possible to reduce the backlog, but only to slow down its growth rate. A definitive solution to this problem is urgent, combining and maintaining investments in servers, infrastructure and information technology”.

In addition to such measures, since most of the Brazilian patent applications are filled through the PCT, the examination of such applications should be conducted on a much more expedited basis in view of the documentation already provided by the Applicant. Therefore less hours should be needed for the examination of such applications, pushing the examiners´s performance to a higher level in terms of examined cases/month.

It is notable that the Brazilian Patent Office is not the only office experiencing a significant struggle to combat this backlog problem, but that this is rather a worldwide challenge. The beginning of the debate about the problem and the implementation of solutions within patent offices all over the world, at least provides some hope that better days will come.

In this sense, the new administration of the Brazilian Patent Office has recently informed that a huge downsize problem of the current patent technology is about to be announced, and this is currently a huge expectation for patent applicants in Brazil.

José Eduardo Filgueiras

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