Brazil: New programme aims to solve patent backlog

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18 September 2019

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.