BR PTO the Final Battle Against the Patent Backlog: Resolutions 240/2019 and 241/2019


12. July 2019

By Vivianne Cardoso Banasiak, Client Relationship Manager

Solution against the patent blocklog

For years the BR PTO has struggled to reduce its patent backlog in order to process applications within reasonable timeframes. This is a long-standing problem and several measures have been introduced aiming to minimize the big delays. However, despite all the efforts, the patent backlog is still massive. An article summarizing all the actions taken by BR PTO against the patent backlog was recently published in our blog.

Resolutions 240/2019 and 241/2019

Nevertheless, on 7th July, 2019, the Brazilian Patent Office (BR PTO) published in the Industrial Property Gazette (often referred to as RPI) what is expected to be the solution against the patent backlog: Resolutions 240/2019 and 241/2019. These Resolutions aim to optimize the technical examination proceeding of patent applications in Brazil and figure as part of the Government’s “Strategic Industrial Property Project” of reforming and reorganizing the current system established at the BR PTO.
The new Resolutions are based on an existing Resolution 227/2018, published on 30th October, 2018, which defines the pre-examination proceedings of patent applications using the results of prior art searches carried out by Patent Offices of other countries, of International or Regional Organizations, to expedite the technical examination proceeding conducted by the BR PTO.
In general terms, the difference between these two resolutions rests on the fact that Resolution 241/2019 regulates the simplification of technical procedures for examination of patent applications (pending a 1st technical examination) by using the work already done by other patent offices in the world.
The Resolution 240/2019 regulates the examination procedures of patent applications (pending a 1st technical examination) where no search has been performed by other patent offices in the world. For patent applications examined under the new Resolutions, the BR PTO will publish a pre-examination requirement under two new codes: 6.21 (for Resolution 241/2019); and 6.22 (for Resolution 240/2019).

Requirements for resolutions 240/2019 and 241/2019

The Resolutions are applicable to patent applications that fulfil the following requirements:

Resolution 240/2019 Resolution 241/2019
No first technical examination shall have been carried out by BR PTO; No first technical examination shall have been carried out by BR PTO;
No request for any type of priority examination shall have been requested to the BR PTO; No request for any type of priority examination shall have been requested to the BR PTO;
 
No third party observation petition shall have been presented by any entity or ANVISA*;
 
No third party observation petition shall have been presented by any entity or ANVISA*;
 
No corresponding patent application with prior art searches carried out by Patent Offices, International or Regional Organizations. The existence of a corresponding patent application with prior art searches carried out by Patent Offices, International or Regional Organizations.
Filing date until 31st December, 2016 Filing date until 31st December, 2016

*ANVISA: Brazilian Health Regulatory Agency
Whether the patent application does not fulfill the requirements, such exclusion will also fall on its divisional applications.
Once the above-mentioned requirements are met, the BR PTO will publish the pre-examination requirement (codes 6.21 or 6.22) containing:

Under code 6.21:

  • the search report with the prior art documents cited in the searches and/or technical examination carried out by Patent Offices of other countries, of International or Regional Organizations;
  • a request to adjust the claim and/or present arguments related to the patentability requirements in light of the prior art documents.

Under code 6.22:

  • the search report with the prior art documents: search carried out by Brazilian patent examiners;
  • a request to adjust the claim and/or present arguments related to the patentability requirements in light of the prior art documents.

The applicant will have a period of 90 (ninety) days to fulfill the requirement of the pre-examination (reply filed under code 207). Otherwise, the patent application will be shelved.
Whether the new set of claims presented increases the number of claims submitted at the time of the examination request the fee for the examination request should be supplemented.
Regarding the patent applications under Resolution 240/2019, whether the search carried out by BR PTO returns only non-relevant documents, the patent will be granted and no pre-examination requirement (code 6.22) will be published.
The Resolutions 240/2019 and 241/2019 will enter in force on 01st August, 2019 and on 22nd July, 2019, respectively. The Resolution 227/2018 will be revoked on 22nd July, 2019 by Resolution 241/2019.
 
Source: www.inpi.gov.br

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