New possibilities for applying for priority examination at the BRPTO

In recent months the Brazilian Patent and Trademark Office (BRPTO) has taken steps to reduce the enormous backlog of pending patent applications. It has extended the Green Patents Programme (Resolution 145/2015) under the recently created Patent Prosecution Highway Pilot Programme (Resolution 154/2015) – both initiatives that allow for the priority examination of certain special patent applications within the previously established requirements – and created a new taskforce to speed up the administrative process for patent applications. In addition, at the end of 2015 the BRPTO announced that it was updating the Priority Examination Resolution for patent applications from 2013 (Resolution 151/2015), while at the start of 2016 it launched the Priority Pilot Project BR (Resolution 153/2015). These two resolutions are intended to expand the number of patent applications that are eligible for priority examination status.

In general terms, Resolution 151/2015 facilitates the participation of “interested third parties” in transmitting the priority examination requirement of patent applications. As a result, an interested third party can now request priority examination status for a patent application by another applicant (usually a competitor) if it can prove that:

• it has been accused by the applicant of reproducing the object of the patent application; or
• it holds a patent application or a granted patent for a technology which is equivalent to that of the application or the holder of technology which is equivalent to that of the other patent application.

As the first ground was foreseen in the Priority Examinations Resolution 2013, the breakthrough lies in the second ground, which is vital for interested third parties as it makes the system more flexible. They can now take active or preventive steps to prevent unfair interference in their operating markets, or can address the legal uncertainty caused by similar patent applications.

Resolution 153/2015 presents an interesting prospect and is particularly directed at multinational technologies. According to the Priority Pilot Project BR, in order to be eligible for priority examination status a national patent application (either filed with the BRPTO or considered by the BRPTO under the Patent Cooperation Treaty) must also later be filed abroad. Although this initiative imposes no restrictions on the technological field of the patent application – as is the case with the Green Patent Programme and the Patent Prosecution Highway Pilot Programme – it has a duration of only one year and is limited to a maximum of 100 patent applications.

The new possibilities for priority examination are aligned with the current thinking of the BRPTO now that it is headed by Luiz Otávio Pimentel, who has been working tirelessly on initiatives to tackle the BRPTO's main weakness: the infamous patent backlog.