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Bye, bye backlog? Government measures to stimulate business in Brazil.

(BRPTO’s gazette of July 9th, 2019).

The BRPTO published on July 9th, 2019 the long-waited rules implementing the BRPTO’s new project to reduce the patent Backlog. This project aims at reducing the number of pending applications by 80% until 2021 and the time taken by the BRPTO to grant a patent to about two years.

Rule #240/2019 and Rule #241/2019 implement new Office Actions, similar to the “pre-examination Office Action”, which are based on a prior art search report and a request for the applicant to provide amendments and/or arguments against the cited prior art documents.

These measures were announced on July 3rd in Brasilia as part of the Government’s action plan to generate growth and reduce bureaucracy. They reinforce the BRPTO’s mission to stimulate the innovation and competitivity of Brazil’s economic and technological development through the efficient protection of intellectual property.

The implementation of the action plan is much less controversial than the proposed simplified procedures put to public comments on July 31th, 2017. According to the BRPTO, this action plan would have the advantage of not requiring any change to legislation or additional costs for the BRPTO, and of maintaining the institution’s competencies and decision-making autonomy.

Eduardo Hallak, partner at Licks Attorneys, attended the event organized by the Ministry of the Economy, the Special Secretary for Productivity, Employment and Competitiveness, and the BRPTO. High-ranking officials, such as Paulo Guedes, Minister of the Economy, and Claudio Vilar Furtado, BRPTO’s President, participated in the event.

Below you will find a summary of Rule #240/2019 and Rule #241/2019 and the requirements established by them.

Rule #241/2019 implements a new Office Action that is intended to speed up the examination of pending Brazilian applications based on a prior art search report issued by foreign Patent Offices on foreign counterparts.

This office action will be comprised of a prior art search report and a request demanding the applicant to amend the application and/or submit counterarguments in light of the documents listed in the search report. The applicant will have 90-days to file a reply to this Office Action.

This so-called “Preliminary Office Action” will be published under code 6.21 as of July 23rd, 2019. It shall be published on applications complying with the following requirements:

Without a technical opinion issued by the BRPTO;
Not have an expedited examination/PPH request filed at the BRPTO;
Not have third-party observations, including the ones provided by the ANVISA;
Have a prior art search report issued by foreign Patent Offices on foreign counterparts;
Have been filed up to December 31, 2016.
Additionally, it is important to mention that if an application is not qualified for this program, the preliminary Office Action will not be issued for its divisional applications.

If the applicant fails to reply the preliminary Office Action within the mentioned deadline, the application will be abandoned by the BRPTO, with no right to appeal.

Among the differences between the “Pre-examination Office Action”, issued under code 6.20, and the new “Preliminary Office Action”, to be issued under 6.21, is the fact that the BRPTO will not be allowed to cite new prior art documents after the issuance of the preliminary Office Action. Additionally, the following particularities should be noticed:

The technical opinions issued by the corresponding foreign Patent Offices will be considered as Third-party observations by the BRPTO;
When the reply to the office action encompasses an amended claim chart adapted to the relevant prior art documents mentioned in the search report and to the Brazilian patent practice, the application shall be allowed by the BRPTO;
When neither an amended claim chart is adapted to, nor arguments are provided against the relevant prior art documents, the application shall be rejected by the BRPTO.
Rule #241/2019 revokes Rule #227/2018, which established the pre-examination Office Action.

Rule #240/2019 implements a new Office Action that is intended to speed up the examination of pending Brazilian applications without a foreign counterpart.

This office action will be comprised of a prior art search report and a request demanding the applicant to amend the application and/or submit counterarguments in light of the documents listed in the search report. The applicant will have 90-days to file a reply to this Office Action.

This “Preliminary Office Action” will be published under code 6.22 as of August 6th, 2019. It shall be published on applications complying with the following requirements:

Without a technical opinion issued by the BRPTO;
Not have an expedited examination/PPH request filed at the BRPTO;
Not have third-party observations, including the ones provided by the ANVISA;
Not have a prior art search report issued by foreign Patent Offices on foreign counterparts;
Have been filed up to December 31, 2016.
Additionally, it is important to mention that if an application is not qualified for this program, the preliminary Office Action will not be issued for its divisional applications.

If the applicant fails to reply to the preliminary Office Action within the mentioned deadline, the application will be abandoned by the BRPTO, with no right to appeal.

Among the differences between the “Pre-examination Office Action”, issued under code 6.20, and the new “Preliminary Office Action”, to be issued under 6.22, is the fact that the BRPTO will not be allowed to cite new prior art documents after the issuance of the preliminary Office Action.

The original Portuguese version of Rule #240/2019 is available here and of Rule #241/2019 is available here. Please contact us for the English version.

Please contact us at patents@lickslegal.com for more information on this matter, we will be glad to assist you.

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