The fact that the Brazilian Patent and Trademark Office ("BPTO") has built a huge patent backlog over the years has become noteworthy, especially considering that 65.2 percent of patent applications take over 10 years to be decided, according to the BPTO's Strategic Plan for 2018-2021. Naturally, this extensive term to have a patent application examined is a cause of concern for national and international patent owners and inventors who want to protect their inventions in Brazil. After all, the patent owners cannot enforce their exclusivity rights before the patent application is granted and the technology may have become obsolete during the 10 or more years since the filing. Even though they may seek damages against those who unduly used their technology during the time it was being analyzed by the patent office, it can be hard or even impossible to quantify the losses suffered during this stage.
Obviously under a lot of pressure, the BPTO has been promising that they will reduce the patent backlog for years. However, it still has not been significantly changed. Hopefully, this year the BPTO's measures will start proving to be effective as the patent office has announced their "Patent Backlog Combat Plan" last week.
In short, the main part of the plan consists of incorporating searches already performed by other countries' patent offices on the patent applications, which according to the BPTO applies to 80 percent of the applications in the queue. The process will be that the BPTO will issue an office action for the applicants to respond to the documents cited by the other patent offices and, if necessary, adjust the application. If the applicant does not respond, the application will be cancelled. The BPTO stated that with these new measures they plan on reducing the average term for examining a patent to two years by 2021.
Furthermore, it is worth noting that the BPTO has also issued a new resolution (No. 239/2019) to simplify and standardize the procedures for the expedited patent applications, which includes the Patent Prosecution Highways ("PPH"). Patent owners just need to be careful to comply with the new procedures and codes being implemented by the BPTO.
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