The publication of the 2015 public patents protection statistics by the Brazilian Patent and Trademark Office ("BPTO") contain some interesting points. For example, from a total of almost 16,000 decisions published in the Official Bulletin, around 57% were cases which were shelved whereas only 0.6% were ratified waivers, i.e. cases in which the applicants formally notify the BPTO they are no longer interested in the patent application.
The infamous backlog of patent exams is even more evident when we see that the BPTO´s current decision-making capacity, despite the heroic efforts by its few but dedicated Examiners, does not even reach half the amount of applications. (There were around 33,000 new cases for almost 16,000 decisions.) This high number of shelved cases suggests a lot of the public employees´ time is wasted on cases in which the applicants are no longer interested.
More specifically, it is worth noting that a patent application is shelved when: (i) the annuity payment has not been made for more than a year; (ii) the applicant did not file the requirement for a technical exam by the pre-arranged deadline; (iii) technical opinions or official actions are not answered within the legal deadline or (iv) the applicant did not pay the grant fee for a deferred application. We can clearly see that all the above factors occur because of the lack of voluntary initiatives by those interested parties who end up losing their interest in those matters that were originally so innovative. This is their right. However, they do so in a unilateral, silent way without telling the BPTO to which they had revealed all the information in order to obtain the privilege of benefitting exclusively for a period of time they no longer need or want.
The large number of cases that fit this situation – and, likewise, the very small amount of applications that have their withdrawal requirement registered - shows how the problem of the backlog is also directly related to the users of the system. Obviously, many of these withdrawals are not communicated for a number of strategic economic and/or commercial reasons or by the fact that they could regret the decision in the future – as the possibility of reactivating the case would last until a notice is published informing it was shelved. However, the cases in which the decision has been taken to give up and end up being revived are really rare and this is another reason why this decision by the applicants becomes extremely important in helping to regularize the Brazilian patent system.
Based on this approach, it could be a good strategy for the BPTO to carry out a publicity effort to encourage its clients to formalize the announcement that they are giving up the attempt to obtain a patent by stating that they do not want to continue with the process. Some additional encouragement to the exemption of the fee to shelve this decision to give up the process could be considered at this time. Due to the sheer size of the backlog, the granting of a percentage discount for any future application to be filed by the same patent holder or, even, the possibility of offering to replace the withdrawn case by another by the same patent holder who is still in the processing line. The time freed up by the examiners who would no longer have to analyze "stillborn" cases would help significantly reduce the imbalance in the patents system in a short period of time.
Bearing in mind the recent and constant initiatives by the BPTO to find a solution to this very serious problem, it would also be worth assessing the benefits of a possible implementation of the "duty of disclosure" in Brazil´s standards (as occurs in the US, for example, where the depositor is obliged to officially communicate the results of foreign exams for corresponding cases). Another possibility is to study alternatives for the processing, concession and time of validity of inventions that do not have a disruptive nature, as is the case with utility models. Academic studies have been made in this sense and many discussions should still arise but all the efforts are valid in trying to resolve this issue that is so important for foreign investors and Brazil´s progress. After all, the property right laid down in the Brazilian Constitution and Industrial Property Law aims to boost the technological and economic development of the country.
* Sonia Gama has a Master´s degree and Doctorate in Intellectual Propriety and is a Patent Analyst at the DANIEL ADVOGADOS law firm.
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