INPI publishes actions to end the backlog of patents

On past July 3, the National Institute of Industrial Property (INPI) published the actions that it will adopt to end the backlog of patents in two Resolutions: No. 240/2019 and No. 241/2019 available at http://www.inpi.gov.br/links-destaques/sobre/legislacao-1.
 
           The Institute aims to reduce, within two years, 80% of the total number of patent applications that have been deposited over ten years ago and are still pending a final decision.
 
           In this respect, the representatives of INPI have always been the object of much criticism and demands due to the delay in the technical examination of the patent applications, as the applicants and industrial property agents working at INPI on behalf of the applicants are greatly displeased with the fact that there are currently multiple applications pending decision for over ten years on the patentability or not of their inventions.
 
           In a first concrete action to try to solve the issue of the backlog of pending applications awaiting technical examination, INPI implemented a pilot project in 2018, through Resolution No. 227 of October 25, 2018, which determined the analysis of the patent application of a Brazilian invention pending examination, harnessing the result of priority searches carried out in patent offices from other countries for patent applications belonging to the same family as the Brazilian application.
 
           Thus, a Brazilian patent application that had one or more equivalent applications already assessed in other countries would be examined by INPI based on the prior art documents already pointed out in priority searches conducted abroad, thus expediting the examination procedure.
 
           The results obtained by INPI with such pilot project were positive, which lead to the Institute’s decision of publishing Resolution No.  241/2019 and transforming such initiative to harness the results from searches conducted by patent offices from other countries and international and regional organizations in a regulatory practice.
 
           Resolution No. 241/2019 became effective on July 22, 2019 and, in practice, INPI will publish in its Industrial Property Magazine (RPI) a preliminary requirement in which it sets out the existence of search reports issued abroad for cases equivalent to the Brazilian application under examination and requests the adjustment of the claim scope and submission of arguments evidencing the existence, in the invention, of the requirements of novelty, inventive step and industrial application.
 
            The term for submission of the response to such requirement is of 90 days, under penalty of final shelving of the application, that is, shelving without possibility of filing an administrative appeal.
 
           Resolution No. 240/2019, in turn, shall become effective as from August 1st, 2019 and is related to invention patent applications that also await, for a long time, the technical examination thereof, but that do not have searches conducted in patent offices from other countries or international or regional organizations.
 
           For patent applications in this situation, INPI chose to adopt a measure that has already been employed for some years by the Examination Patent Office (EPO), that is, the issue of a preliminary search report and a requirement to be fulfilled prior to beginning the technical examination of the application. Therefore, the applicant is required to adjust the application and/or arguments to the patentability requirements within a term that, if not complied with, shall result in the final shelving of the application.
 
           The purpose, in this case, is to identify the applicants that may still be interested in the patent applications that are long stagnant before INPI and to proceed with the examination of such cases only.
 
           For both Resolutions referred to herein, the eligible patent applications shall meet the following requirements:
 
(a)  not to have been the object of a technical examination carried out by INPI;
(b)  not to have been the object of an application for any type of priority examination by INPI;
(c)  not to have been the object of subsidies (oppositions) for the examination submitted by third parties or ANVISA; and
(d)  to have been filed up to December 31, 2016.
 
With the publication of Resolutions No. 240/2019 and 241/2019, INPI presents to society its effective actions to end the backlog of patent applications, with due regard to the provisions of the Federal Constitution and the Industrial Property Law (Law No. 9,279/96). Now it is a matter of monitoring the issue of requirements and, mainly, the return of the Institute to those requirements timely fulfilled, so that one can verify if, in fact, the measures proposed will result in a more expeditious and attractive processing of patent applications for the protection of investments in technology and innovations in Brazil. 
 
* Gabriela Neves, partner at Chiarottino e Nicoletti Advogados, works in the Intellectual Property Area; Leandro Carneiro Fonseca is specialized in Patents at the same law firm.
 
Gabriela Neves* and Leandro Carneiro Fonseca
Chiarottino e Nicoletti