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Client Alert – BPTO unveils radical proposal to tackle patent backlog

On July 27, 2017, the Brazilian Patent and Trademark Office (BPTO) issued a public consultation on a proposal to reduce the current patent backlog by streamlining examination of pending applications.

According to the proposal, eligible applications (as detailed below) would form a separate queue so they would be allowed as published or notified upon their national phase entry. This would mean, in practice, that such applications would not undergo substantive examination – letters patent would instead be issued with a general disclaimer calling attention to the non-patentable subject matter set forth in Articles 10 and 18 of the Brazilian Industrial Property Act.

In order to be eligible for streamlined examination, a patent application would have to meet the following requirements:

(1) the filing request or request of entry into national phase (for PCT applications) should have been submitted to the BPTO before the streamlined procedure is introduced (the ‘commencement date’);

(2) the application should have been published or have its early publication requested within 30 days from the commencement date;

(3) examination of the application should be requested in no more than 30 days as from the commencement date;

(4) all annuity fees should have been timely paid; and

(5) the application should not have technical office actions issued (i.e. applications already under substantive examination, having at least one office action published, are ineligible).

Applications relating to pharmaceutical inventions, certificates of addition and divisional applications would be excluded from the BPTO’s proposal.

Applications meeting the above requirements should have a notice of admission published in the Official Journal (without any need for a specific request from the applicant), and have their notice of allowance within the following 90 days. This would be to the exclusion of (1) the applicant requesting the application be subjected to substantive examination, or (2) third parties filing technical observations (i.e. pre-grant oppositions) within this 90-day period. In such cases, the application will be placed in the regular queue to undergo substantive examination.

It should be noted that this consultation is just a preliminary step inviting the public’s input on the proposed streamlined procedure, which would come in force only if the BPTO decides to move forward.

Interested parties may provide comments or suggestions until August 21, 2017. The BPTO will then consider third-party submissions before deciding whether a streamlined procedure should be implemented, and under which conditions.

Should you have any interest in contributing to the public consultation or need to receive further information, please contact us.

Murta Goyanes is an intellectual property law firm relying on partners with over 25 years of experience and a team with recognized credibility that is capable of handling the most diverse demands.