On April 12, 2022, the Brazilian Patent Office (BPTO) published Ordinance INPI/PR nº 34/2022 establishing some changes in the provisions of preliminary office action of dispatch code No. 6.23 for patent applications which technical examination is pending.
Of the two important changes brought by the aforementioned Ordinance, one of them is the fact that there is no longer an end date in the filing date of applications eligible for the publication of such office action.
As of now, any patent application that has a filing date from January 1, 2017, is eligible to have a preliminary office action of dispatch code No. 6.23 issued, as long as there are searches available at patent offices in other jurisdictions for their correspondent counterparts from the same family.
In addition, the new ordinance also brings a change in the procedure related to the filing of a response to the preliminary office action at issue: it is determined that failure to submit an adequate set of claim considering the prior art documents mentioned as impeditive to the patentability of the invention, as well as pertinent arguments in view of the patentability requirements will lead the application to rejection.
Thus, the importance of presenting amendments and technical arguments in response to the preliminary office actions remains clear, since the absence of these elements in the response will immediately lead to the rejection of the patent application, leaving as an alternative only the filing of an appeal, forwarding the application for analysis in the second instance of BPTO. It is important to emphasize that the average time limit for a decision for cases under appeal is more than three years countered from the appeal date for the majority of the technical fields.
Finally, it should be noted that there was no change in the deadline for the filing of a response by the Applicant to this office action, which remained for 90 days from the publication date thereof.
For more information about the new INPI/PR Ordinance nº 32/2022, please do not hesitate to contact us.