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Client Alert – BPTO implements the use of results of prior art searches from other jurisdictions in examination of patent applications

On October 30, 2018, the Brazilian Patent and Trademark Office (BPTO) published Resolution No. 227, which defines the procedures for the analysis of patent applications by using the results of searches already carried out by Patent Offices from other countries, International or Regional Organizations. Such measure aims at reducing the number of patent applications waiting for examination and expediting the technical examination.

In order to take advantage of this proceeding, the patent application must meet the following conditions:

i. It must not have been technically examined by the BPTO;

ii. It must not have been submitted to any fast-track examination program;

iii. It must not contain third party observations or opinions reported by Brazilian National Health Surveillance Agency (ANVISA); and

iv. It must have a corresponding application with prior art searches already performed by foreign Patent Offices or Organizations.

For patent applications that meet the above requirements, the BPTO will publish a pre-examination office action, containing prior art documents mentioned in searches performed by foreign Patent Offices, and asking the applicant to amend the application and/or submit arguments as to patentability requirements based on such documents.

The applicant will have a 60-days deadline for responding the office action, under the penalty of having the application shelved.

Once the office action has been replied, the examination will follow its normal course, and the allowance will be issued if the set of claims is in accordance with the prior art documents and the Brazilian local rules.

For further information, please contact us.