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Brazilian PTO program for backlog reduction of patent examination. New initiative will issue preliminary office actions for patent applications filed in 2017

On March 30^th, the Brazilian Patent and Trademark Office published a new rule (No.21/2021) which, together with other recently adopted measures, intends to expedite the prosecution of patent applications.

The new rule entered into force on April 1^st, 2021. Preliminary office actions will be issued on those patent applications filed within the period between January 1^st and December 31^st, 2017. However, in order to be accepted in this proceeding, the patent applications must meet the following requirements:

• No substantive examination in progress
• The patent application is not included in any fast track route
• No third parties nor ANVISA observations filed in the file wrapper
• Counterpart applications having prior art searches issued by national or regional IP Offices

The preliminary office actions will be issued with no technical opinion, just informing the prior art documents that were detected in the searches carried out by counterpart patent offices in the same family of the Brazilian patent application. In response thereto, the applicant should submit arguments and amendments taking into account such prior art results. The search and technical report issued in the counterpart case may be submitted together with the amendments and will be considered as a third party observation.

If no response is filed within a period of 90 days counted from the publishing date of the office action, the case will be considered definitively abandoned.

In ClarkeModet Brazil we have a multidisciplinary and seasoned team of experts in order to advise you on the prosecution and enforcement of your Intellectual Property rights.

For any query about the new procedure, do not hesitate to contact us through our expert Silvia Costa scosta@clarkemodet.com.br.

Silvia Costa