Proposal for Simplified Procedure
As known by all users of the patent system in Brazil, an inappropriate permanent policy on the protection of technical knowledge, the BRPTO (INPI – National Institute of Industrial Property of Brazil) has 231,184 patents on file pending examination, according to data from late June 2017.
With such a high number of applications and only 326 examiners, it is common that patents will be granted 10 years after their filing. The following chart includes the technical areas and the time to grant, where the mechanical sector stands out with 12 years; the pharmaceutical sector 13 years; and the telecommunications sector 14 years.
With an average of 45 patents examined per year per examiner, and even with productivity being forecast to increase to 55 patents/year per examiner for 2017, it would be no more than 17,930 examined patents/year (326 examiners x 55 examinations/year). It would still be insufficient to cover the number of annual applications in Brazil, of approximately 28,000 in 2016, and 26,000 forecast for 2017.
As shown by several studies, the number of hours per examination of each patent directly results in higher-quality rights granted and in a lower number of legal claims. Therefore, it would be good to make the backlog solution through mutual aid – even if outsourced – to examine these patents.
Unfortunately, the solution proposed through public consultation is to eliminate all applications on file pending examination by granting all patents without any kind of examination.
All patent applications that met the following requirements would be eligible to the simplified procedure, under the terms of article 2 of the proposal:
I – Filing of the patent application or the requirement to enter the domestic phase made up to the date of publication of the rule;
II – Applications published or with a publication requirement within thirty days from the date of publication of the rule;
III – Request of the examination of the patent within thirty days from the date of publication of the rule;
IV – Timely payment of the annual fees;
V – Nonexistence of a technical examination opinion, under the terms of art. 35 of Law No. 9,279, dated 1996.
It still unclear if there would be an express request by the owner of the patent to benefit from the simplified procedure (art. 2), or if it would be imposed to all applications, with the possibility of an express request to leave it (art. 4, sole §). According to the rule, there is a publication on the Bulletin of the PTO about the granting of the simplified procedure, which would result in the granting of the application WITHOUT any substantive examination.
Therefore, all patents would be granted as filed. Please note that the discussions already occurred with the BRPTO, the patents were granted AS FILED. In other words, voluntary changes made at any time after the filing of the application, including those changes arising from the international phase of the applications covered by the Patent Cooperation Treaty – PCT, were not taken into consideration.
All applications with technical subsidies already presented or presented within 90 days after the granting of the inclusion of the application in the simplified procedure were excluded from it.
Applications for patent filed after the publication of the proposed rule were also excluded from this simplified procedure.
The procedural flowchart would be presented as follows:
In our opinion, all applications subject to voluntary changes or which needed changes in the claim listing for a patent to be valid must not undergo the simplified procedure.
A patent document without substantive examination is a very weak document in legal terms, and which gives rise to a claim for nullity. Therefore, despite the examination period, in our opinion, we should not submit our applications to this eventual rule that the BRPTO proposes as a solution to the backlog issue.
It is also our opinion that third parties’ applications that affect us must undergo technical subsidies to avoid the granting of a null privilege that will lead us to legal claims for the nullity of patents, including all associated costs.
Finally, it is not certain how the proposed rule will actually be designed and approved. However, considering the legal hierarchy, it must be subject to a decree or ordinary law, as it will change the current Law 9,279/96 with respect to this specific period of time, and these specific requests in progress.
The full proposed rule is attached hereto. The INPI wishes that this text becomes effective as of January 2018.
We remain at your disposal to answer any other questions regarding the specific cases with which we are dealing.