The Brazilian PTO published on October 30, 2018, the Rule #227/2018 that intends to accelerate examination of patent applications filed for more than 10 years using the results of technical search provided by Patent Offices of other countries from International or Regional Organizations.
Considering the urgency in decisions of patent applications instated for 10 years or more and as a means of reducing social losses resulting from the extension of the term of patents as in Article 40, single paragraph, of Law n°9279 from 1996 (IPL);
Considering that the result of anteriorities search provided by Patent Offices from other countries, from International or Regional Organizations, can be used to speed up the technical decisions of the Brazilian Patent and Trademarks Office;
This resolution rules the analysis of pending patent of invention examination, using the result of anteriorities search realized in Patent Offices o other countries, from International or Regional Organizations.
This measure is applicable to applications that:
i) Have not been submitted to the first technical examination of the BPTO;
ii) Have not been requested any priority examination of any kind of the BPTO;
iii) Have not been requested subsidies of examination or ANVISA subsidies; and
iv) Have the corresponding request with anteriority search provided by Patent Offices of other countries, from International or Regional Organizations;
In case the patent application fulfill all requirements of this resolution, the Brazilian Patent Office will issue an office action named “pre-examination” asking for the following:
i) Search Report containing the anteriority documents cited in the search or technical examination provided by other Patent Offices from other countries, from International or Regional Organizations; and
ii) Request of the applicant to adjust the application or the submission of arguments as to the requirements for patentability, according to the documents mentioned in the Search Report.
In the case of adjustment results a higher number of claims compared to the claims mentioned in the first examination request, it is necessary to complement the payment of the examination fees.
After the office action publication, the applicant will have 60 days to reply to it.
In case the BPTO does not receive the corresponding reply during this period, the application will be extinct.
In case the BPTO receives the corresponding reply, the BPTO will proceed with the examination.
In case the BPTO receives the reply with adjustment, it must respect the specific regulations.
In the occasion of technical examination, the Search Report mentioned in this resolution will correspond to the Search Report provided by Article 35 of Brazilian IP Law without any loss of complementary searches.
The original Portuguese version of Rule #227/2018 is available here