Federal Court of Rio de Janeiro judges decides writ of mandamus dealing with the Plan to Combat the Patent Backlog

Federal Court of Rio de Janeiro partially granted the Writ of Mandamus to determine the partial nullity of Resolution No. 241/2019, only with regard to the impossibility of carrying out additional searches, being assured to those represented by the plaintiffs associations that, in each concrete case, they can carry out such searches, when appropriate and pertinent.

The Writ of Mandamus challenges the validity of Resolutions No. 240 and 241 of 2019, as well as SEI Execution Rules No. 01, 02, 03, 04, 05, 06 DIRPA/PR of 2019, which establish the Plan of Combating the Patent Backlog. Furthermore, the reestablishment of Execution Rule No. 08/2019 was required, in order to prevent the BPTO from supposedly suppressing the steps inherent in the procedure of analysis and preparation of a prior search report.

To further understanding the core of the matter, the table below with the data of the standards questioned in the writ of mandamus follows:

It should be noted that the aforementioned decision assured the examiners that, depending on the specific case, additional searches may be carried out, whenever they deem them to be appropriate and pertinent, given the complexity of the case or lack of information for the proper continuation of the examination, that is, if it is not applicable to the patent application under analysis, the examiners are not bound to issue orders 6.21 and 6.22.

It is important to point out that this decision is not automatically invalidating any previous act performed during the term of Resolution 241/19. Therefore, any requests for the recognition of invalidity or re-analysis of patent examinations must be filed by the patent holders.

The first instance decision was published on November 15, 2021, and can still be appealed, which will be analyzed by the Federal Regional Court of the 2nd Region.

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