How can BRPTO users help to reduce the patent backlog?

The Brazilian Patent and Trademark Office (BRPTO) has published its 2015 patent statistics. Of nearly 16,000 decisions published in the Industrial Property Magazine during the year, around 57% of cases were shelved and only 0.6% were officially withdrawn (ie, the patent applicant formally notified the BRPTO that it was abandoning the case).

The well-reported backlog of patent examinations is further demonstrated by the number of decisions made by the BRPTO. Despite heroic efforts by its examiners, decisions were issued in less than half of the filed cases (around 33,000 new cases were filed, with almost 16,000 decisions being issued). This high instance of shelved cases suggests that much public employee time is wasted on cases in which the applicants are no longer interested.

The BRPTO will shelve a patent application when:

• the annual subscription has not been paid for more than a year;
• the applicant has not filed the required technical examination by the deadline;
• technical requests are not dealt with by the deadline; or
• the applicant has not paid the dispatch fee for the letter patent related to a deferred application.

Therefore, cases are shelved because the relevant parties fail to take the correct action. Although this is their right, they do so unilaterally without informing the BRPTO.

The high number of shelved applications – and the low number of cases in which a withdrawal applications is approved – demonstrates how the backlog issue directly affects system users. Many withdrawals are not communicated for strategic economic or commercial reasons, or because an applicant may change its mind (a case can be reactivated at any point until the shelving announcement appears in the Industrial Property Magazine). However, cases revived in this manner are rare.

Based on this approach, it could be a good strategy for the BRPTO to carry out a publicity campaign to encourage applicants to withdraw patent applications formally. Further encouragement such as waiving the withdrawl fee could also be considered. Due to the sheer size of the backlog, the BRPTO could also consider granting a percentage discount for future applications by the same applicant or even allowing the applicant to replace the withdrawn case with another. This would help to free up examiner time and reduce the imbalance in the patent system quickly.

The BRPTO is implementing various initiatives to find a solution to this issue. It is also worth assessing the benefits of implementing the duty of disclosure in Brazil – this applies in the United States, where an applicant must officially communicate the results of foreign examinations for corresponding cases. Another possibility is to look at the alternatives for examining the validity of non-disruptive inventions (eg, utility models). All efforts should be made to try to resolve this issue, which is of major importance to foreign investors and Brazilian progress. After all, the property right laid down in the National Constitution and the Industrial Property Law aims to boost the country's technological and economic development.

BRPTO annual patent statistics