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Speeding Patent Process in Brazil

In order to optimize the technical examination proceeding of patent applications in Brazil, the Brazilian PTO published on October 30, 2018 Resolution INPI/PR #227/2018, which defines the pre-examination proceedings of patent applications. This measure aims to use 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 BPTO.

The use of the results of the prior art searches applies to patent applications that fulfill the following requirements:

– No first technical examination shall have been carried out by BPTO;

– No request for any type of priority examination shall have been requested to the BPTO;

– No third party observation petition shall have been presented by any entity or ANVISA; and

– The existence of a corresponding patent application with prior art searches carried out by Patent Offices, International or Regional Organizations.

Once the above mentioned requirements are met, the BPTO will publish the pre-examination requirement (Order 6.20) containing: (i) 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; as well as (ii) a request to adjust the claim and / or present arguments related to the patentability requirements in light of the prior art documents.

If 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

The applicant will have a period of 60 (sixty) days to fulfill the requirement of the pre-examination. Otherwise, the patent application will be shelved

The permanent adoption of the patent pre-examination program results from the success of the pre-exam pilot project from January to June 2018. The results of the pilot project indicated that the implementation of such program could generate a gain of productivity of up to 17.2%, contributing to the reduction of BPTO´s backlog.

If you would like to receive the English version of the resolution or more information about it, please contact Rafael Freire (rfreire@clarkemodet.com.br) or Louis Lozouet (llozouet@clarkemodet.com.br).