Continuing with the goal of reducing the number of patent applications pending decision, the Brazilian PTO (“BPTO”) published the Ordinance/INPI/PR N° 21, of March 24, 2021, which will come into force on April 1, 2021. Said ordinance extends the Patent Backlog Fighting Project essentially with the same rules as before, but now aiming to attack patent applications filed between January 1, 2017 and December 31, 2017.
In summary, patent applications filed within the aforementioned period that meet the following requirements:
• have not yet undergone a first technical examination,
• have not requested any type of expedited examination before the BPTO,
• have not suffered third party oppositions and/or have not received subsides from ANVISA, and
• have a foreign counterpart with prior art search carried out by the foreign Patent Office, by International or Regional Organizations,
will be assessed on the merits making use of the documents unveiled by the searches already carried out. The first action will be a preliminary official action.
The exclusion of a patent application from the entitlement to enter the project will also apply to its divisional applications.
Unlike the initial Backlog Fighting Project, in which the examination of the application following the compliance with the preliminary official action was limited to the documents mentioned in the search report carried out by the foreign Patent Offices and by International or Regional Organizations, the new Ordinance makes clear that supplementary searches may be carried out and new prior art documents not previously mentioned may be pointed out. The examination opinion issued by such foreign Offices may be considered as a subsidy to the technical examination.
The BPTO will grant a period of 90 (ninety) days, counted as from the publication date of the preliminary office action, to file a response.
Finally, it is worth mentioning that, following the same rationale as before, the lack of response to the preliminary official action will imply in the definitive shelving of the patent applications. Responses to the preliminary official action that fail to conform the set of claims to the prior art documents cited as jeopardizing the patentability and/or fail to provide pertinent arguments will result in rejection of the application. In other scenarios, after receiving the Applicant’s response, the BPTO will proceed with the examination on the merits.