Practical aspects of fast-track examination of patent applications in Brazil

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Luiza Tângari Coelho
Fialho Salles Advogados, São Paulo
luiza.tangari@fialhosalles.com.br

Introduction

In August 2019, the Brazilian Industrial Property Office (INPI) initiated a plan to tackle patent backlog in Brazil, aiming at substantially reducing – over a period of two years – the number of pending patent applications and the timeframe for processing future applications.

According to INPI and the National Industry Confederation (CNI), the ‘backlog plan’ has already achieved remarkable results, with the reduction of pending examinations by 41 per cent and of the patent decision timeframe to five years after the examination request. The expectation is that by 2021 the amount of pending patent examinations will be further reduced by 52 per cent and the average patent examination timeframe will decrease to 4.5 years.

Although this is promising news for patent applicants in Brazil, the expected shorter timeframe still results in a long wait, especially in the context of patent protection for disruptive and strategic technologies. As a solution to this issue, the INPI has successfully created two programme options which allow for fast-track processing of patent applications: the Prioritised Patent Processing Programme and the Patent Prosecution Highway (PPH).

These fast-track programmes have successfully allowed applicants to have their patent applications decided in a much shorter timeframe: at the end of the first half of 2020, the average time for decision on technical examination of fast-track patent applications was only around 13 months.

Prioritised patent processing programme

The first fast-track programme option in Brazil is the Prioritised Patent Processing Programme, which gives eligible patent applications priority during the entire patent proceedings, including examination.

To be eligible for prioritised patent processing the patent application must fit one of 16 categories prescribed by the INPI:

• applicant aged 60 or over: the patent request should be presented with a copy of the applicant’s official identification document and is free of charge;
• applicant with a physical or mental disability: the request should be presented with a copy of the medical report testifying to the condition and is free of charge;
• applicant with a serious illness: the request should be presented with a copy of the medical report testifying to the condition and is free of charge;
• applicant is a micro or small company: the request should be presented with a copy of the public certificate which proves the company’s status and is subject to an administrative fee;
• applicant is an institution of science, technology and innovation: the request should be presented with a copy of the public certificate which proves the institution's status and is subject to an administrative fee;
• applicant is a start-up company: the request should be presented with a copy of the public certificate which proves the company’s status and is subject to an administrative fee;
• patent application in which the grant of the patent is a condition for obtaining financial aid: the request should be presented with proof of the allegations and is subject to an administrative fee;
• patent application in which the subject matter is reproduced by third parties without authorisation: the request should be presented with proof of the allegations and is subject to an administrative fee;
• patent application in which third parties are being accused of counterfeiting: the request should be presented with proof of the allegations and is subject to an administrative fee;
• patent application in which there are previous users of the technology: the request should be presented with proof of the allegations and is subject to an administrative fee;
• patent application which results from public funding: the request should be presented with proof of the allegations and is subject to an administrative fee;
• patent application in which the subject matter is already available on the market: the request should be presented with proof of the allegations and is subject to an administrative fee;
• patent application which refers to green technology: the request should be duly justified and is subject to an administrative fee;
• patent application which refers to a product for the treatment of specific diseases: the request should be duly justified and is subject to an administrative fee;
• patent application which refers to a product for treatment of Covid-19: the request should be duly justified and is subject to an administrative fee; and
• patent application which refers to a patent family whose first application was filed in Brazil: the request should be presented with proof of the allegations and is subject to an administrative fee.

After filing the patent application and the request for priority processing, INPI will verify if the aforementioned requirements are met and, if so, grant priority to the application.

The request for priority does not interfere with patent rights – regardless of the result, the applicant must continue to fulfil its responsibilities regarding the application, including meeting deadlines and paying renewal fees.

Patent prosecution highway

The second fast-track programme option is the PPH, which is a cooperation agreement between different countries that provides patent applicants with accelerated patent prosecution by prescribing the possibility of sharing information between patent offices and, in some cases, even the option of one office to use positive examination results received from other offices.

In Brazil, if one of the foreign offices covered by a PPH agreement considers the subject matter of a patent application as patentable, then INPI – upon the request of the applicant and payment of administrative fees – may prioritise the examination of the equivalent Brazilian patent application, as well as the performance of any other acts at administrative level for the patent prosecution in Brazil.

Since December 2019, Brazil has unified the proceedings applicable to its PPH agreements, which currently cover the following jurisdictions: Argentina; Austria; Chile; China; Colombia; Costa Rica; Denmark; Dominican Republic; Ecuador; El Salvador; Europe (EPO); Japan; Nicaragua; Panama; Paraguay; Peru; Singapore; South Korea; Sweden; United Kingdom; United States; and Uruguay.

After the 2019 reform, the PPH scope was expanded to all technological areas and the capacity for admission of priority requests was increased to up to 400 applications per annual cycle.

The PPH agreements are pilot projects, and most of them are valid until 30 November 2024. The exceptions are Japan (30 November 2021); China (31 December 2024); Austria and Sweden (both 31 January 2025); South Korea (31 March 2025); and Singapore (30 April 2025).

Conclusion

It is clear the INPI has been making successful efforts in order to provide fast and efficient patent prosecution, and that in the next few years the timeframe of such proceedings is expected to decrease even more.

Nevertheless, it is worth remembering that in multiple situations INPI provides the applicant with the option to request a fast-track processing of the patent application, which will significantly shorten the timeframe for patent analysis even when in comparison to INPI’s current timeframe for regular applications.

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