João Marcelo Lima and Otavio Beaklin Licks Attorneys is committed to investigating the underlying causes and consequences of the Brazilian Patent and Trademark Office’s (INPI) backlog of patent examinations. Our firm filed 11 freedom of information (FOI) requests under the Brazilian Information Transparency Act in order to obtain access to new, undisclosed data that shed light on the backlog problem.

We identified two main factors that affect productivity in the INPI: (i) 40% of patent examiners are not currently examining patent applications at all, as they are busy performing activities other than examination; and (ii) those patent examiners who are examining patents are doing so at a significantly slow pace—on average, three examinations a month in 2015. We explored these two points in our previous article (WIPR April/May 2016). According to the INPI’s top officials, the backlog has grown at a slower pace when compared to previous years. Assuming that this is true, such an accomplishment may not be the result of enhanced productivity at the INPI. In fact, consistent with information recently disclosed by the INPI, a massive number of patent applicants abandoned their applications over the last few years. According to recent estimates, Brazilian patent examiners take on average 13 to 14 years to examine a patent application, which is higher in comparison to other patent offices, such as the European Patent Office and the US Patent and Trademark Office. There may be a connection between patent examiners’ decreased productivity and the increased number of abandoned patent applications. The number of abandoned applications has increased since 2013.

In order for an applicant to formally abandon a patent application in Brazil, it may either file a request for abandonment, which is free, or simply discontinue annuity payments. In the former case, the INPI publishes the abandonment; in the latter, it takes the INPI far more time to deem an application forfeited. Table 1 shows the number of patent applications that were abandoned from 2005 to 2015 through the filing of a request for abandonment. However, when the number of patent applications that were abandoned because the applicant discontinued annuity payments is added, figures reach higher levels (Table 2).

To what extent does the abandonment affect the backlog? To answer this question, the total number of filings made each year is compared with the total abandonments. Table 3 shows the representation of abandonments in total filings. On average, from 2005 to 2015 abandonments have accounted for 32% of total filings; during the 2012 to 2015 period, the average rate increased by 45%. As mentioned above, one possible reason for increased abandonments in the last few years is the INPI’s implementation of a task-force to screen and publish every patent application that was abandoned due to lack of annuity payment. Another explanation is that applicants are abandoning more patent applications because the INPI’s productivity rates are so low. Which of those two explanations is more convincing? A question left open is whether the INPI’s low level of productivity has brought about the above-mentioned increase in the number of abandonments. Should the INPI provide faster patent application examination, perhaps the backlog would decrease even if the number of abandonments falls.

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This article was originally published in “WIPR”, World Intellectual Property Review. For further information, please access the following website: http://www.worldipreview.com/contributed-article/assessing-abandoned-patents-at-the-inpi