Patent priority examination in Brazil – an attempt to expedite examination and go around the backlog

April 2017 | EXPERT BRIEFING | INTELLECTUAL PROPERTY

financierworldwide.com

It is a common complaint that delays in examining patent applications by national offices causes serious harm to the patent system and, in particular, to the rights of the patentee. Such delays drastically affect business decisions and the commitments made by companies to invest in a country that fails to address the matter in a responsible way.

To make things more dramatic, the dynamic of inventions has shown that technology obsolescence arrives sooner every day, making delays in the examination and granting of patents a clear factor in diminishing economic advantages that should be fuelling the creation industry.

According to David Kappos, former director of the United States Patent and Trademark Office (USPTO), “every quality patent application that sits on the shelf represents jobs not created. For that reason, the USPTO has made the reduction of the patent backlog its highest priority.”

In the same way as the US, other patent offices – in particular those in Japan, Germany and, lately, Brazil – have made efforts to prioritise the examination of applications which fulfill certain requisites.

In Brazil, even if one considers the 18 months secrecy period (counted from the filing date of the latest priority claimed) and the fact that the application can only be examined after a specific request is filed (within 36 months from filing), the average time for an examination is far from reasonable.

In an attempt to reduce the delays in getting patents examined, and in harmony with recent court decisions which ordered the Brazilian Patent and Trademark Office (BPTO) to examine longstanding cases, a series of measures have been adopted to reduce the examination backlog by prioritising cases which conform to predetermined conditions.

It is fair to say that we now have two possible ways in which to expedite the examination of a patent application. One is the administrative fast track, in which the applicant is expected to comply with the pre-requisite established by the BPTO, and the other is a fast track derived from judicial orders, which is usually determined in view of the BPTO´s unreasonable delays in carrying out patent examinations.

To be eligible for the administrative fast track, an application must fulfill one of the following conditions: (i) the applicant is aged 60 or over and has a physical or mental deficiency or severe disease; (ii) the patent application has been reproduced by third parties without the authorisation of the applicant; (iii) the party which requests an examination is being accused of infringing the object of the application; (iv) the granting of the patent application is a condition to obtaining financial resources from agencies or national official credit institutions; (v) be a case of public interest or national emergency declared by the Brazilian government; (vi) the object of the patent application is encompassed by the act of the federal government which declares a national emergency or public interest; (vii) the object of the patent application is linked to environmental preservation technologies in accordance with the Green Patent Programme; or (viii) the object of the patent application is considered strategic, especially if it is linked to pharmaceutical products or materials related to public health.

In addition to the above, the recent adoption of the Patent Prosecution Highway (PPH) and Patents MPE applied to applicants registered in Brazil as small entities should be cited as attempts by the BPTO to reduce its backlog.

Also important as a means of expediting the examination of an application is the BPTO’s treatment of cases which were filed in good order, with little need to issue formal actions or the applicant has submitted proof of the granting of equivalent patents in other jurisdictions. This is on the understanding that a well drafted patent application provides the applicant with elements to seek the abstention of its object by third parties. In this topic, Brazilian patent law allows the applicant to seek indemnification from unauthorised use of its object by third parties, since the publication of such an application, once it is finally granted, as long as the infringer is notified of such an infringement.

Luiz de Alencar Araripe is a managing partner and Renata Lisboa is a lawyer at Araripe & Associates. Mr Araripe can be contacted on +55 (24) 2103 2200 or by email: luiz@araripe.com.br. Ms Lisboa can be contacted at +55 (24) 2103 2200 or by email: renata@araripe.com.br.

Luiz de Alencar Araripe and Renata Lisboa

Araripe & Associates