How the Reorganization of INPI's Examination Queues Impacts Patent Strategy and Process Management?

In late 2023, the INPI published a Technical Note¹ detailing the new management of technical patent examination queues, introducing major shifts from the Institute's long-standing practice.

Following the publication of the note on December 19, 2023, the organization of the examination queue was significantly altered. Prior to this date, the examination queue was ordered based on the filing date of the patent application. Currently, under the new framework, priority is determined by the date of the request for examination of the patent application.

Before delving into the details of this change, it is important to clarify what the so-called "examination request" entails.

Article 33 of the Brazilian Industrial Property Law (LPI – Law No. 9,279/96) provides that the applicant or interested third parties must request the examination of the patent application within thirty-six (36) months from the filing date, under penalty of the application being shelved. Furthermore, Article 31 of the LPI stipulates that patent examination will not begin prior to sixty (60) days following the application's publication.

In other words, for a patent to be evaluated regarding its compliance with patentability requirements, the applicant (or an interested third party) must request examination from the INPI by paying a fee; otherwise, the application will be shelved.

Thus, beyond being mandatory to prevent the application from being shelved, the examination request is particularly crucial when considering Article 32 of the LPI. This provision dictates that, to better clarify or define the patent application, the applicant may make amendments to the application's wording up until the examination request, provided such amendments do not introduce new matter.

Consequently, the timing of filing the examination request largely depended on whether the applicant needed to modify the patent drafting. Other strategic considerations were also used to determine the optimal timing for requesting examination, such as deferring initial patent costs.

This was because paying the examination request fees early brought no advantage to the applicant, even if the patent drafting was mature enough. Prepaying examination request fees did not expedite the INPI's examination process, as the queue was organized strictly by the application's filing date.

For this reason, the INPI noted that the average timeframe for filing such requests was 33.5 months from the filing date, demonstrating that applicants routinely chose to wait until near the end of the deadline.

Regardless of the pros and cons of requesting early examination, the change in queue management was primarily driven by the INPI's goal of continuing to reduce the patent backlog and achieving technical examination of patent applications within two (2) years.

With this target examination timeframe of two (2) years, the Institute feared that if applicants continued requesting examination near the deadline, technical divisions might run out of patent applications to examine.

In the INPI's own words: "if the current pace of technical examination requests and first office actions is maintained, these divisions will have no new applications to examine between March and September 2024." (item 16 of Technical Note SEI No. 27/2023/INPI/DIRPA/PR).

To address this potential challenge, the INPI conducted international benchmarking with other patent offices, held a public call for input (where 76% of respondents supported changing the queue system), and consulted existing legislation.

Thus, according to the INPI, the advantages of this change are as follows:

(a) encourages applicants to request examination earlier to move up in the queue;

(b) offers applicants the ability to expedite or slow down the examination process according to their needs;

(c) allows interested third parties to expedite the examination of other applicants' files if necessary, or choose not to do so;

(d) the practice of queuing based on the examination request aligns with international standards. (item 41 of Technical Note SEI No. 27/2023/INPI/DIRPA/PR)

From a strategic perspective in patent prosecution and portfolio management, companies must strike a balance between swift patent allowance and high-quality drafting. It is therefore essential to prioritize robust, technically well-defined claims to effectively guarantee the exploitation and enforcement of patent rights.

¹ Technical Note SEI No. 27/2023 / INPI / DIRPA / PR