Brazil´s Patent and Trademark Office (PTO) has taken steps in recent months to try and reduce the enormous backlog of pending patent applications to be examined.
Besides extending the Green Patents Program (Resolution Nº 145/2015) of the recently created Patent Prosecution Highway Pilot Program (Resolution Nº 154/2015) – initiatives that allow the priority examination of certain "special" patent applications within the previously established requirements – and the creation of a new Task Force to speed up certain administrative analysis related to patent applications, the PTO also announced at the end of 2015, that it was updating its Priority Examinations Resolution for patent applications from 2013 (through Resolution Nº 151/2015) and, right at the beginning of 2016, the Priority Pilot Project BR (Resolution Nº 153/2015). These last two Resolutions are aimed at expanding the number of cases making a "normal" patent application liable for Priority Examination status.
In general terms, Resolution Nº 151/2015 makes the participation of "interested third parties" in transmitting the Priority Examinations requirement of patent applications more flexible.
As a result, the interested third party can now request Priority Examination status for a patent application of another applicant (usually its competitor) if: I) it can prove to the PTO that it itself has been accused by the other applicant of reproducing the object of the patent application in an undue way; or II) manage to prove to the PTO that it itself is the holder of a patent application or a granted patent, the technology of which is equivalent to the technology of the patent application of the another applicant or also the holder itself of technology that is equivalent to the technology of the patent application of the other applicant.
Bearing in mind that the first hipothesis was already foreseen in the patent applications Priority Examinations Resolution of 2013, the breakthrough lies in the second hipothesis, which, in a completely unprecedented way, is being seen as extremely important for interested third parties as it makes the system more flexible and expands the possibilities for their operations, as they can act in an active and/or preventive way in an attempt to prevent an unfair interference in their operating market, or also try and offset the legal insecurity caused by the existence of patent applications of a similar content.
For its part, Resolution Nº 153/2015 points to an extremely interesting prospect and is directed at multinational technologies in particular.
According to the Priority Pilot Project BR, in order to become liable for Priority Examination status, patent applications that were originally national (initially filed with the PTO or previously analyzed by the PTO within the Patent Cooperation Treaty - PCT) were also later filed abroad.
Although this initiative does not present any restriction related to the technological field of the patent application – as is the case with the "Green Patent Program" and the "Patent Prosecution Highway Pilot Program" – it should be stressed that it has a duration of only one year and is limited only to the maximum number of one hundred (100) patent applications.
These new possibilities for Priority Examinations are completely aligned with the current thinking of the PTO now that it is headed by Luiz Otávio Pimentel from Santa Catarina state who has been working tirelessly on initiatives that can tackle its main weak point, the infamous patent backlog.
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