The Brazilian Patent Office places the fight against the patent application backlog as its top priority

On October 30, 2014, the Director of the Patent Board of the Brazilian Patent Office (INPI), Mr. Júlio César Moreira, made a presentation to patent agents and attorneys to discuss the measures that INPI is implementing to reduce the patent application backlog. The backlog, as highlighted by Mr. Moreira, is currently the biggest issue plaguing INPI. Problems with the scanning of documents and the processing and examination of applications are creating a backlog of approximately 10 years in every art division.

For Mr. Moreira, one problem that has contributed significantly to the increase in the backlog has been INPI’s transition to a paperless system. Since 2013, hundred of thousands of petitions and patent applications have been sitting waiting to be scanned. Two companies hired by the INPI to assist with the scanning have gone bankrupt leaving the job unfinished. According to Mr. Moreira, a third company was recently hired to help with the scanning.

The second problem is the processing and publishing of PCT applications entering the national phase in Brazil. According to Mr. Moreira, Brazil receives approximately 22,000 application per year; however, INPI’s staff is only able to process approximately 10,000 applications per year. Therefore, approximately 12,000 applications per year are added to the backlog. INPI’s proposal to solve this problem is to focus on the publication of applications that are complete (namely, those applications that do not contain any missing documents). Applications that are not complete and have formal irregularities will be put aside and revisited in the future. At some point, an office action will issued requesting correction of the irregularities. In view of this, it is recommended that Applicants make certain that their applications comply with all formal requirements when entering the national phase in Brazil in order to avoid being placed in the backlog queue of “incomplete applications”

The backlog associated with substantive examination remains a big issue. Mr. Moreira stated that the average time until the beginning of examination is approximately 10 years. Unfortunately, the telecom division has the largest backlog. In this division, it takes approximately 13 years for examination just to begin and an additional 1 year for examination to be completed and a patent granted.  

Mr. Moreira also spoke of INPI’s concern over the backlog in view of the 10 year minimum patent term as established by Article 40, sole paragraph (Article 40), of the Patent Statute, and the consequences of this article for Brazil (especially in connection with public health). According to Mr. Moreira, currently, 63% of all patents granted by INPI have a 10 year minimum term. Unless something changes quickly, within four years, all patents granted in Brazil will have the 10 year minimum term. In view of this, INPI has been forced to take aggressive measures to try and reduce the backlog.

Mr. Moreira announced that the INPI will soon launch a program called “Promoted Withdraw”. According to Mr. Moreira, this program will allow an Applicant to abandon an “old” pending patent application and refile it as a new application which would be placed much higher in the queue for examination. INPI believes that this program will encourage Applicants to keep alive only those applications that they have a real interest in and this will help reduce the number of patent application currently under examination.

All in all, Mr. Moreira is very positive regarding INPI’s future. He stated that INPI is planning to hire an additional 400 examiners until 2018. He believes that the hiring of these new examiners will speed up the processing and examination of applications, thus contributing to the reduction in the backlog.

Mr. Moreira also stated that other measuring being taken to reduce the backlog include improvements in the training of the current INPI staff and streamlining administrative routines in order to increase productivity.

Please continue to watch the BRIC Wall Blog for further updates on the reduction of the application backlog at INPI. 

This post was written by Lisa Mueller and Roberto Rodrigues and Breno Souza of Licks Attorneys.

 

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