The Brazilian Patent Office (BPO) has been struggling with the patent backlog in Brazil for years. In a recent attempt to tackle this issue, the BPO published a proposal that would temporarily eliminate patentability analysis, instead allowing applications to simply proceed to grant in most cases. The BPO is currently conducting public hearings with IP practitioners to gather opinions regarding their proposal for this “extraordinary solution,” as they are calling it: the implementation of a simplified procedure for analyzing patent applications.
Under the current proposal, if the new procedure is accepted and adopted, the applicant of a patent application filed before the BPO or in the PCT’s national phase examination will be able to enjoy a simplified examination procedure, provided they are properly filed prior to publication of the new regulation. The BPO would grant the patent application without any patentability analysis. However, there are four instances where patent applications would be ineligible for this simplified process.
- pharmaceutical patent applications;
- applications for certificates of addition;
- divisional applications that originated from a parent application that was already analyzed;
- patent applications that were subjected to third-party observations
Further, all applications or national phase entries made after publication of the proposed regulation would be subject to the usual substantive examination.
If a patent applicant would like to avoid the expedited analysis and instead seek the standard examination procedure, the applicant would have to request it within 90 days after the BPO publishes the notification of admissibility of the application.
It is noteworthy that this procedure would not abolish prohibitions under the Brazilian IP Law regarding what is not considered an invention or what is not patentable (e.g.: discoveries, scientific theories, and mathematical methods; computer programs per se; all or part of natural living beings and biological materials found in nature, etc.). The patent letter issued in the simplified procedure would be followed by a disclaimer of those prohibitions.
Patents granted under this simplified procedure could still be subjected to administrative nullity procedures and judicial nullity actions. These applications, having a considerably lower degree of substantial analysis, and the limitations that go along with that, may be important in terms of new strategies that may be adopted. For example, filing third-party observations on specific applications of interest could become a tool to force the BPO into conducting patentability analysis.
While the simplified procedure is something to be considered, it would be important to carefully weigh the advantages against gaining patent protection that encompasses complete analysis by the BPO. This will vary on a case by case basis.
This is still a preliminary proposal that is being evaluated by the BPO. IP practitioners and other interested parties have until August 21, 2017 to submit their opinions for consideration.
We will continue to report future developments on the matter.
For further information, please feel free to contact us.
Read it in pdf: Procedure to overcome patent backlog