Client Alert

The BRPTO makes changes to a program in its Plan to Combat Patent Backlog
(per BRPTO’s gazette of December 29, 2020)

As indicated in our client alert from December 29, 2020, the BRPTO published Ordinance #412/2020, which includes further rules on the preliminary office action program, a component of the BRPTO’s Plan to Combat Patent Backlog.

Ordinance #412/2020 alters the so-called “preliminary Office Action program” related to examining pending patent applications without prior art search reports issued by foreign patent offices, International or Regional Organizations, on foreign counterparts. The main change concerns the possibility of a supplementary prior art search to be carried out by the examiner after the preliminary OA issuance, in case the search report issued with the preliminary OA was performed by an automatic tool that uses a prior art survey algorithm.

This office action will have the same structure as the former, regulated by Rule #240/2019. It will comprise a prior art search report and a request demanding the applicant amend the application and/or submit counterarguments in light of the documents listed in the search report. The applicant will have 90-days to file a reply to the Office Action.

The Office Action shall be issued on applications complying with the following requirements:

i) Without a technical opinion issued by the BRPTO;

ii) Not have an expedited examination/PPH request filed at the BRPTO;

iii) Not have third-party observations, including the ones provided by the ANVISA;

iv) Not have a prior art search report issued by foreign Patent Offices on foreign counterparts;

v) Have been filed before December 31, 2016.

Ordinance #412/2020 came into force on December 29, 2020, and revoked Rule #240/2019.

It is available at the BRPTO’s website, and its original version (in Portuguese) can be downloaded here. For the English version or more information on it, please contact us at patents@lickslegal.com.  We will be glad to assist you.

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