On 9 July, the INPI (Brazilian Patent Office) published two new rules and a guidance note on its Plan to Combat Backlog of Patents.
As discussed in our previous news update on 4 July, the initiative aims to reduce the backlog by 80% before 2021, as well as the average term of grant to approximately two years from the request for examination.
The INPI’s new proposal is very similar to the measure already adopted by the Office with the so-called “Pre-Exam Official Actions”, which started as a pilot program in January 2018.
Under the new rules the INPI will start to issue its preliminary official actions on July 23.
The main differences between the previous program (which is now revoked) and the new plan are summarized in the table below:
| Pre-Exam Official Actions
(Rule #227/2018) |
Preliminary Official Actions
(Rule #240/19) |
Preliminary Official Actions
(Rule #241/19) |
|
| Decision Codes to be Published in the Official Gazette | 6.20 | 6.22 | 6.21 |
| Official Fees for Reply | No | Yes | Yes |
| Deadline for Reply | 60 days | 90 days | 90 days |
| Penalty for Failing to Reply | Dismissal
(Right to Appeal) |
Definitive Dismissal
(No Right to Appeal) |
Definitive Dismissal
(No Right to Appeal) |
| Prior Art Search Conducted by a Foreign Patent Office | Yes | No | Yes |
| Applications with third-party observations (including from ANVISA) | Not Admissible | Not Admissible | Not Admissible |
| Application Filing Date | No | Up to December 31, 2016 | Up to December 31, 2016 |
| INPI will Conduct Further Searches | Yes | No | No |
| Legal Position | Revoked by Resolution #241/19 | In force as of August 1, 2019 | In force as of August 1, 2019 |
Access the new rules and guidance note here.
If you would like more information on our work with patents in Brazil, please get in touch with us.
