(BRPTO’s gazette of March 30, 2021).

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As a continuation of the Plan to Combat the Patent Backlog, new Ordinance #21/2021 brings a new group of applications to the preliminary office action program. Now, applications filed in 2017 and still pending an examination may also be eligible to receive preliminary OAs.

This so-called “preliminary office action” was created in 2019, under Rule #240/2019 (later revoked by Ordinance 412/2020) and Rule #241/2019, as one of the BRPTO’s measures to reduce the patent backlog and was limited to applications filed by December 31, 2016.

As of now, 103,194 applications have received the preliminary OA created in 2019, but almost 53 thousand of them still await a technical decision from the BRPTO. Independent surveys and data analysis performed by our data collection team show the following scenario for the 2019 preliminary office action program:

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Click here for more statistics about the Brazilian patent system.

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The question the Brazilian patent system user asks is why the BRPTO launched a “new phase” of the preliminary office action program if it has not issued a technical decision for all applications filed up to December 31, 2016. Is the BRPTO creating a new Backlog?

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Ordinance #21/2021

The preliminary office action established by Ordinance #21/2021 follows the same propositions of the 2019 preliminary office action program. It entails a prior art search report (based on prior art documents cited by foreign Patent Offices on foreign counterparts) 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 has 90-days to file a reply to this Office Action.

It is limited to applications filed from January 1, 2017, to December 31, 2017, and shall be published for those meeting the following requirements:

• Not have 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; and
• Have a prior art search report issued by foreign Patent Offices on foreign counterparts.

Additionally, it is essential to mention that if an application does not qualify for this program, the preliminary Office Action will not be issued for its divisional applications. The following particularities should also be noticed:

• The technical opinions issued by the corresponding foreign Patent Offices will be considered as Third-party observations by the BRPTO; and
• When neither an amended claim chart adapted to the cited prior arts nor arguments are provided against the relevant prior art documents, the BRPTO shall reject the application.

If the applicant fails to reply to the preliminary Office Action within the 90-day term, the application will be abandoned by the BRPTO, with no right to appeal.

Ordinance #21/2021 came into force on April 01, 2021, and its Portuguese version is available here.

Please contact us for the English version.

We will be glad to assist you with more information on this matter at patents@lickslegal.com.

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