Pulling the plug on INPI’s patent backlog

Introduction
The government is expected to launch an emergency measure to eliminate the Brazilian Patent and Trademark Office’s (INPI's) patent backlog by automatically granting 231,000 pending non-pharmaceutical applications. The proposed rules for implementing the new measure were made available for public comment in early 2017 – the deadline to provide comments was August 31 2017.

INPI officials recently held that certain proposals made by local associations could complicate the process.

While it is difficult to know the precise details and timing for this measure, companies may soon need to deploy a short-term strategy – as short as 90 days – to mitigate potential risks and take full advantage of the new system (eg, using the proposed opt-out system for selected applications and filing pre-grant oppositions against competitors). Companies should also consider entering the national phase of Patent Cooperation Treaty applications before the 30-month deadline; likewise, Paris Convention filings should be made whenever possible.

The INPI implied that no other viable option could solve the backlog in the short term. All pending non-pharmaceutical applications filed before the emergency measure is published and becomes effective should be covered.

Claim amendments
If the emergency measure comes into effect, it is expected that the INPI will refuse any amendments made after an application has been filed ‒ patents will be granted based on the original claim chart filed in Brazil. Therefore, applicants must ensure that original claims provide adequate coverage.

Opt-out clause
The opt-out clause is a significant provision in the emergency measure because the enforcement of a commercially important patent without examination reduces the likelihood of obtaining preliminary injunctive relief. There is serious concern that objections to the validity of this measure and to the patents granted under it will be raised in the courts.

The opt-out clause allows applicants to withdraw an application from the automatic grant programme in order for it to undergo regular substantive examination. Applicants are advised to use the opt-out clause for important inventions, as most pending cases would be automatically granted to clear the backlog.

Pre-grant oppositions
The emergency measure would give competitors the option to remove third-party applications from the automatic grant system by filing observations (pre-grant oppositions). Interested parties would be able to target and analyse competitors’ patent portfolios and submit observations, thereby removing these applications from the automatic grant system. Further, statistics have shown that submitting third-party observations in applications can significantly deter expected allowance decisions.

Comment
While the government’s emergency measure aims to eliminate the INPI’s patent backlog – a critical and frustrating problem that has grown worse in recent years ‒ it has notable flaws and drawbacks. Owing to restricted financial resources, it is regrettable that government officials were unable to devise plausible alternatives that both simplify the examination procedure and ensure compliance with patentability requirements. Further, despite the INPI’s push to enact the measure, examiners and administrative personnel still face the daunting task of digitising over 200,000 patents before the proposal can be realised.