As most applicants of patents already know, a patent application in Brazil takes some time to be granted. But do you know that it is possible to speed up the examination of your patent application?
Currently, it takes an average of 10.4 years between the filing date of a patent application and the grant of the patent by the Brazilian Patent and Trademark Office – BPTO. This is because the BPTO has been facing a backlog of unexamined patent applications with more than 120 thousand patent cases ready to be examined and waiting to be distributed to the Examiners and, each year, about 30 thousand new patent applications are filled in Brazil.
The most critical areas with the longest waiting time between the filing date and the granting date are the Pharmaceuticals and Telecommunications, with around 13 years of waiting time. On the other hand, the areas of Metallurgy & Materials and Food & Agronomy are those with the shortest waiting time: 7.3 and 7.8 years, respectively.
Despite this scenario, BPTO offers several ways to accelerate the examination of the patent application.
Applicant categories for requesting prioritized examination
The applicant / patent holder included into one of the categories listed below may have examination procedure being accelerated:
- Natural person aged 60 or over;
- Natural person with physical or mental disability;
- Natural person with a serious illness;
- Microenterprise, individual microentrepreneur or small business(*); and
- Scientific, Technological and Innovation Institution(*).
(*) It applies only for Brazilian applicants.
Situations to request the prioritized examination
Even if the applicant does not fall into the categories mentioned above, in certain situations it is still possible to hasten the examination of a patent application, such as:
- The granting of a patent is a pre-requirement for obtaining financial resources by development agencies or national official credit institutions;
- The invention described in the patent application is being copied or commercialized by third parties without authorization;
- Third parties are being accused, by the applicant of the patent application, of copying or commercializing the invention; and
- Third parties that already had a certain technology and subsequently filed a patent application for this technology.
Patent applications of specific subject matters may request the prioritized examination
Examination of patent applications for specific subject matters can also be prioritized, for example:
- Green Patents, that is, patents dealing with Green Technology, which are environmentally friendly technologies. The list of Green Technologies is based on the inventory of the World Intellectual Property Organization – WIPO and includes technologies related to alternative energies, transport, energy conservation, waste management and sustainable agriculture;
- Patent of products or processes used in the health area for the diagnosis, prophylaxis and treatment of AIDS, cancer, rare diseases or neglected diseases (for example, Chagas disease, dengue, chikungunya, zika, malaria, tuberculosis, rabies etc.).
Patent applications abroad
Finally, if the applicant has a patent application abroad, it is possible to request the expedited examination for the Brazilian application through the following modalities:
- Priority BR Program: provided that the patent application abroad has been filed based on a patent application previously filed in Brazil (Brazilian priority);
- PPH Project – Patent Prosecution Highway: the BPTO maintains cooperation agreements with Patent Offices in some countries (currently, there are already 15 partner countries and with the possibility of this number increasing: Japan, Argentina, Chile, Colombia, Costa Rica, Denmark, Ecuador, Paraguay, Peru, Uruguay, Europe, USA, United Kingdom, China and Austria) and together they offer this modality of prioritized examination.
Through the PPH agreement, when the partner Patent Office takes the exam and considers that the invention disclosed in a given patent application is patentable, it is possible to request the accelerated examination for the corresponding Brazilian application and vice versa. Another advantage of this procedure is the opportunity to adjust the Brazilian application in accordance with the patent that was accepted and, thus, to speed up the examination of the application and obtain the Letters Patent.
It is important to note that, regardless of the way chosen to request the prioritized examination of a patent application, the BPTO will proceed with the analysis of the application and submitted documents, and will decide on whether the examination is to be prioritized. The decision will be published in the BPTO’s Gazette and, if accepted, the technical examination of the application will be speeded up; otherwise, the application will continue following the regular procedures and in the normal “queue” in order to be examined.
Another point to be highlighted is that the technical examination “itself” of the patent applications, which were elected for a prioritized examination, is not differentiated, that is, the analysis procedure carried out by the BPTO is the same, regardless of whether the application was elected for a prioritized examination or not. The only difference is actually the time, since patent applications, which were elected for accelerated examination, enter a preferential queue and reach the Examiners’ hands before the applications, which follow regular examination procedures.
We also emphasize that each priority examination modality has requirements and deadlines to be met, in addition to specific documents, that must be submitted to the BPTO to prove that the process is in one of the situations listed above.
Considering the specificity of each of the priority examination modalities offered by BPTO, we point out the importance of a prior assessment of the status of the patent application before proceeding with the application.
For that purpose, Ricci Intellectual Property team is available to assist the patent holders and inventors in this matter and for further clarification.
Learn more: INPI will prioritize the analysis of patent applications about technologies related to the Covid-19
