TEXT FOR PUBLICATION OF PRIORITY PROCEDURE RELATED TO TECHNOLOGY AVAILABLE ON THE MARKET OR PUBLIC FUNDING
Have you ever thought about speeding up the examination of your patent application in Brazil? In addition to the well-known strategies for accelerating examination in Brazil, such as PPH, protection of green technology and product for the treatment of specific diseases, there are still little explored embodiments of examination acceleration that can be good strategies for patent applications that do not fall within the main priority procedures of the Brazilian Patent Office. More specifically, acceleration may be obtained for inventions whose technologies are available in the Brazilian market or are resulting from public funding.
On September 1, 2020, BPTO started the pilot program for priority examination of applications with technology already available on the market. Continuing the program, on December 16, 2021, BPTO published the opening of the second phase of the mentioned project through Ordinance/INPI/PR Nº 053, valid from January 1, 2022 until December 31, 2023, where new limitations were established, among them:
“II – a request for priority examination may be made for patent applications of the same applicant within the weekly cycle;
III – up to 100 (one hundred) requests for participation in pilot projects may be made for patent applications classified in the same Section of the International Patent Classification (IPC), per annual cycle;
IV – up to 400 (four hundred) applications for participation per annual cycle may be received; (…)”
Despite the number limited to 400 participation requests per cycle, we noted when analyzing the distribution of requests over the last three years that this embodiment is not being fully explored.
As it can be seen, since 2020 only 63 requests have been made for technology made available in the market, being far below which was proposed by said Ordinance/INPI/PR Nº 053. Additionally, we emphasize that from these 63 requests made for said embodiment, 62 were accepted by the BPTO.
In this sense, it is important to note the requirements for participation in the two types of procedure:
- Not being within the confidentiality period or having a request for early publication;
- Having examination requested;
- Not being voluntarily divided or modified between the application period and the decision on the priority procedure.
Furthermore, for said priority examination to be submitted before the BPTO, it is necessary to present the following documents:
- copy of document demonstrating that the subject-matter claimed in the patent application was licensed, offered for sale, imported or exported; and
- statement issued by the representative person, applicant or third party stating that the document obtained in subparagraph a) refers to all or part of the subject-matter claimed in the patent application.
It is important to mention that the document requested in item a) can be, for example, a print screen of a website selling a product, which partially or totally contains the subject-matter of the application for which the accelerated exam is requested.
In this way, we would like to point out that, in the best scenario, the BPTO takes an average of 2 to 3 years to issue a first technical opinion and almost a year more to issue a final decision, if an office action is issued during the examination.
However, according to the statistical data provided by the BPTO for the last two years, the BPTO is taking an average of 2 to 3 months from the allowance of the application in the accelerated examination process to issue a first technical opinion and another 5 to 6 months to issue a final decision, indicating a great improvement in the efficiency of using this type of procedure for the examination of patent applications.
Finally, since these categories are not being fully exploited in the national scenario, and having 392 vacancies to carry out said procedure until December 1, 2023, as previously presented, we consider this is a great opportunity to use this alternative for accelerating examination, both for its small search and for the exhaustion of the priority examination cycle through PPH, which has already ended in its most recent phase, for example, for applications classified in IPC category H.
