An Office Action without Examination: Brazil has Ambitious Plan to Tackle Patent Application Backlog

By Carlyn Burton 

AIPLA’s IP Practice in Latin America Committee recently sent a delegation to Rio de Janerio, which included committee member and Osha Liang partner, Ms. Carlyn Burton.  During this trip, the delegation met Mr. Claudio Vilar Furtado, President of Brazil’s Instituto Nacional da Propriedade Industrial (INPI) on August 22, 2019.  In particular, Mr. Furtado spoke to the delegation about two new resolutions issued on July 9, 2019, by the INPI.  These two resolutions embody his office’s efforts to eliminate the unexamined patent application backlog in Brazil.  Specifically, these two resolutions will streamline prosecution within a two-year timeframe.

Mr. Furtado described the streamlined process as a mechanism by which INPI can eliminate the backlog without lowering the quality of the patents issuing under this process or increasing the number of examiners (which is currently around 330 total).  Mr. Furtado further explained that approximately 80,000 patent applications should be decided each year under the streamlined process.  Accordingly, this rate of disposition should completely eliminate the backlog within a two-year period.

During the delegation meeting, Mr. Furtado was accompanied by Mrs. Liane Lage, INPI’s Director for Patents.  Mrs. Lage spoke in detail with AIPLA’s delegation about streamlining prosecution, and explained that INPI would issue “standardized office actions” under this process.   More specifically, a “standardized office action” will simply cite to prior art documents without providing examination or technical comments concerning patentability of claims in the application.  Following mailing of such actions, applicants will then have a 90-day period in which to amend claims and/or provide technical arguments concerning the patentability of the claims over the cited prior art.  Mrs. Lage further explained that examiners will primarily use Global Dossier and references cited in corresponding applications by major patent offices to produce these standardized office actions.  However, under this process, examiners may rely more heavily on documents cited by the European Patent Office.  Formal examination will begin after the applicant’s reply to the office action, but will not include further searching by the examiner.  Following a reply to the standardized office action by an applicant, the examiner will still have autonomy to determine whether to grant the patent based on the amendments or arguments provided.  Examination may also continue following the initial reply in order to address patentability, clarity, etc.  Thus, the applicant’s reply is not the only opportunity to put the application in condition for grant.

This INPI program was formally launched in August 2019, and initial assessments are that the process is working well. Mrs. Lage also reported results of an INPI implemented pilot program using the streamlined procedure, which saw no reply to a standardized office action filed in approximately 25% of the applications.  As such, these applications without a reply were immediately withdrawn. On the other hand, 45-50% of applications in the pilot program were immediately granted following a reply to the standardized office action.

In addition to INPI’s presentation, AIPLA’s delegation also attended a meeting with representatives at the Brazilian Federal Regional Court of Appeals for the Second Region, which is a specialized Intellectual Property Appellate Court.  The delegation further held a breakfast for AIPLA Women in IP, and also met with the Consulate General and the USPTO’s IP Attaché at the U.S. Consulate General.  Finally, the delegation joined a gathering of the IP Section of the American Chamber of Commerce.