(BRPTO’s gazette of January 16 th , 2018)
The Brazilian PTO issued an official notification today, on its gazette #2454, instituting a pilot program for the issuance of pre-examination opinions to expedite the substantive examination of patent applications at the Office. According to the official notification, the applicant may voluntarily file amendments to the application to correct irregularities pointed out by foreign Patent Offices.
This new program is very similar to the proceedings provided for in Normative Act #152/1999. Said normative established that applicants could file via a specific brief, as preissuance submissions, a copy of a Letters patent issued after undergoing substantive examination in a foreign Patent office, the translation of the claim chart, as granted, and a copy of the examination request brief filed at the BRPTO. However, Normative Act #152/1999 has been revoked by Rule #118/2005.
The official notification of today establishes that 40 pre-examination opinions will be issued per art unit group. The BRPTO currently has 20 art unit groups.
The pre-examination opinion shall list the prior art documents indicated during the examination of the corresponding foreign patent and which documents will be considered for the BRPTO’s substantive examination. This opinion will be notified in the BRPTO’s gazette under code 6.20 (pre-examination office action). The applicant will have 60 days from the office action notification date to reply it and amend the Brazilian application to comply with the objections raised in light of the listed prior art documents as well as adapt it to the BRPTO’s current guidelines, as provided for in article 34, II, of the Brazilian Patent Statute. Failure to reply to this office action within the mentioned deadline will lead to the abandonment of the application.
Our suggestion for applicants that wish to participate in this pilot program is to identify all pending applications that have corresponding patents issued by foreign Offices and if said patents cover the scope of protection sought in Brazil right away, in view of the limited number of opinions to be issued by each art unit group.
The official notification is available at the BRPTO’s website and can be downloaded from the following link: Pilot program for the issuance of pre-examination opinions (original version in Portuguese).