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On 30 October 2018, the Brazilian National Institute of Industrial Property (INPI) published Rule 227/2018, regulating for the analysis of patents using the results of searches in other patent offices.

The Rule is applicable to patent applications which:

  1. have not already been submitted to technical examination of the INPI;
  2. have not applied to any other form of priority examination by the INPI;
  3. have not received any pre-grant opposition;
  4. have a counterpart application with prior art searches realized by patent offices in other countries.

Once the above conditions are fulfilled, the INPI will publish an opinion setting out prior art documents cited by foreign patent offices and inviting applicant to submit a new set of claims and/or arguments as to the patentability of the claimed invention. Thereafter, the applicant will have 60 days from the date of publication to answer such queries.

The new Rule is based on the findings of an existing pilot program introduced in January 2018, with the objective of evaluating the possible simplification and streamlining of technical procedures for examination of patent applications by using the work already done by other patent offices in the world. Such strategy is in line with the INPI Action Plan of 2018, which seeks to reduce the backlog of patents in the INPI (currently there are approximately 200,000 patent applications pending examination).

The results of the pilot program were published in the executive report headed “Pre-examination in the Patents – Evaluation of Results”  (“Pré-Exame nos Pedidos de Patentes – Avaliaçã o dos Resultados”) in June 2018.

According to a publication on the INPI website:

The report observed that the issuance of the pre-examination can generate a productivity gain of up to 17.2%, which contributes to the reduction of backlog in the INPI. During the evaluation period, 939 patent applications were analyzed and 680 pre-examination opinions were issued. Of this total, 22.1% (150 applications) did not respond to the opinion issued and were therefore dismissed. Of the responses received to the opinions, 5.6% did not have major changes in the application. As much as 87.9% of the responses included a new set of claims.

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Article by Julian Cornelius