A free pilot project of the Brazilian Patent and Trademark Office (BPTO) regarding the pre-examination of certain patent applications began on January 23, 2018. The BPTO’s goal is to evaluate the simplification and expediting of technical procedures for the examination of patent applications, aiming to reduce the amount of patent applications (backlog) of the institute, identifying applications that are still of interest to the applicant. Currently, the BPTO has more than 200,000 pending patent applications for examination.
According to the rules of the project, the Brazilian patent applications in which there are corresponding foreign applications, the owner may voluntarily submit to the BPTO, if eligible, adjustments that have already been indicated by other industrial property offices around the world. From this material, the BPTO will publish a pre-examination opinion pointing out previous issues that will be considered in the technical examination of the Brazilian patent application. The publication of the pre-examination opinion does not replace the technical examination opinion, which constitute a later stage, in which there may still be new searches and inclusions of documents considered relevant.
Certain applications excluded from the pilot project are, for example, applications with any other publication of official requirement and proceedings in which, after the request for examination, a new set of claims was submitted voluntarily. Initially 80 patent applications will be analyzed, provided they do not exceed 40 applications per technical division of the BPTO’s patent office. The pilot project will run until March 2018.
One of the most sensitive aspects of the pilot project and one that may have its legality questioned is the possibility of shelving the patent application in case a requirement raised in the pre-examination opinion is not fulfilled, since this is a requirement currently not contemplated by the industrial property law (Law No. 9.279/1996).