Brazil: The Pendency Of Brazilian Patent Application And What You Can Do About It

Brazil is notorious for the long pendency of patent applications. Currently, the average amount of time for a typical Brazilian patent to be issued with two office actions is not less than 12 to 14 years. Therefore, the majority of Letters Patents are automatically issued with the minimum 10-year term of protection counted from grant as provided for in Section 40. As Brazil takes long-term steps to reduce the pendency of its patent applications in the short-term applicants can, in some cases, seek expedited grant.

The primary reason for the long pendency is a sustained increase in patent filings in Brazil over the years, which the federal government did not follow with investments in human resources.

Aiming at a reduction of said pendency to levels similar to other large economies, the Brazilian PTO, Instituto Nacional da Propriedade Industrial (National Institute of Industrial Property) has reacted with rapid-results initiatives like:

  • a streamlined review of formal aspects during the admissibility examination of BR Phase Entries and not PCT applications within the period January 1, 2013 - December 31, 2016, as provided for in Normative Instruction #02/2017 of June 6, 2017;
  • the e-filing system already in use for some years, which has extended to all services with the Brazilian PTO;
  • the shelving of applications with unpaid maintenance fees before the examiner takes the file for examination; and
  • more examiners working in a home office and new examiners trained "on-the-job."

This author does not expect the new processes to have an immediate impact on pendency. While the new rules take effect, certain applications can jump to the front of the line and begin examination in the short run instead of languishing for what can be 8 -10 years to start the examination process in the ordinary course. Applicants are eligible for an expedited examination for any of the conditions set henceforth and provided that examination has not begun.

1. Expedited Examination for Infringed Claims

In cases where claims are being infringed, the applicant can file a petition for expedited examination. The petition must include evidence of infringement that takes place in Brazil, and a notarized copy of the cease-and-desist letter served to the infringer. The results of the Board of Examiner's review of the evidence and allegations by the applicant are published in the IP Electronic Bulletin.

2. Expedited Examination for Patents Needed for Financing

Expedited treatment can be obtained in cases where obtaining a patent is a condition to receiving financial resources from an official credit institution;

3. Senior Status or Illness

Expedited status can be obtained if the Applicant is a natural person over 60 years of age or if the applicant suffers from certain diseases or has certain mental illnesses.

4. Green Technology

Initially a Pilot Program in 2012 and granting patents with substantive examination within 2,5 years in average, the program became permanent on November 5, 2016. Patent applications directed to environmentally beneficial technologies are afforded expedited examination. The definition of Green Technology is relatively broad and includes technologies related to Energy Generation; Energy Storage; Energy Efficiency; Energy Infrastructure; Transportation; Water & Wastewater; Air & Environment; Materials; Manufacturing/Industrial Agriculture; and Recycling & Waste Management, Transportation, Alternative Energy, and Agriculture. Rules have been promulgated defining "Green Technology" in more detail.

5. Oil and Gas - PPH-BrPTO-USPTO pilot program

Oil and Gas related inventions claiming the US or BR priority qualify for expedited examination under a pilot program when the applications relate to oil prospecting, refining, transportation and other related oil and gas techniques. (IPC B01, B63, C09K8, C10, E02, E21, F15, F16, F17, G01). This pilot program is valid until January 11, 2018, and is limited to the first 150 patent applications.

6. IT and Telecommunications and other akin technologies - PPH BrPTO-JPO pilot program

Inventions relating to IT, telecommunications, semiconductors, computer and audiovisual technologies, certain electric machines, and other akin technologies claiming the earliest priority to JP or BR may qualify for expedited examination. The pilot program is limited to 200 patent applications and valid till April 1, 2019.

Except for pharmaceutical products and process applications - which seemingly have been left out from these developments because of a "pre-grant informal opposition" step being available to ANVISA (Brazil National Health Surveillance Agency) as provided for in Art. 5 of the Interagency Ordinance # 1/2017 of April 13, 2017 - the aforesaid initiatives are cutting down the patent pendency. For applicants in certain fields of technology defined by the claims, there is now a window of opportunity to expedite applications.

This article was first published in on IP tango.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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