INPI updates examination rules in order to drive down the patent backlog

As a further effort to reduce the backlog of pending patent applications, on 12 April 2022 the National Institute of Industrial Property published Ordinance 34/2022 in the Official Gazette (2675). The ordinance sets new rules for the examination of patent applications filed as of 1 January 2017.

In 2019 the INPI launched its ambitious Plan to Combat the Backlog of Patents in Brazil. This covered all applications filed before 31 December 2016 where search or examination results were available from foreign patent offices for corresponding patent applications in the same family. Its main foundation was the publication of standardised preliminary office actions – a list of prior art references cited outside Brazil. Applicants were invited to submit the granted claims of a counterpart patent and/or arguments in favour of the claimed matter.

In March 2017 the plan was expanded to cover patent applications filed from 1 January 2017 to 31 December 2017. Now, all applications filed as of 1 January 2017 onwards are also subject to the standardised preliminary office actions in order to expedite prosecution. Like the plan implemented so far, those standardised office actions will apply to patent applications not subjected to other fast-track routes and that have not received any third-party observations. Applicants must reply to the preliminary office action, presenting an amended claim chart within 90 days. If the reply does not present arguments as to the patentability requirements and if the new set of claims fails to address the prior art documents cited by the INPI, the application will be rejected.

Within this context, applicants should continue to monitor their pending patent applications in Brazil and to reply in good time and with all requested documents to these preliminary office actions so as to prevent applications from being rejected.

On another note, the Plan to Combat the Backlog of Patents has been quite successful so far. The INPI has reduced the backlog of 149,912 patent applications by 83% as of 3 May 2022.

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