Prioritized Examination of Patent Applications
Did you know that the Brazilian Patent and Trademark Office (INPI/BR) offers several PRIORITIZED EXAMINATION procedures for invention patent and utility model applications filed in Brazil?
Given the lengthy period currently required by the INPI to examine a patent application—approximately eight years from the filing date until the issuance of a first technical opinion—the availability of alternative procedures capable of significantly accelerating this first examination has become extremely important for patent applicants and owners. In some cases, this first technical opinion may even result in the ALLOWANCE of the patent application.
It is worth noting that prioritized patent examination procedures before the INPI currently take approximately 18 months for examination and issuance of a technical opinion, representing a substantial reduction in examination time compared with applications processed under the ordinary procedure.
This significant reduction in patent prosecution time before the INPI/BR also directly encourages innovation by individuals and legal entities, both by promoting the use of the patent system to protect innovations in accordance with the law and by fostering the development of new technologies that are important to society, while helping safeguard the substantial investments involved.
Brazilian regulations provide for several categories of prioritized patent examination, as governed by INPI Ordinance No. 247 of June 22, 2020. At least one applicant or owner of an invention patent or utility model application filed with the INPI must fall within one of the following categories:
Elderly person: an individual over 60 years of age;
Person with a physical or mental disability: an individual with a physical or mental disability as defined in Article 69-A, item II, of Law No. 9,784 of January 20, 1999, and Article 4 of Decree No. 3,298 of December 20, 1999;
Person with a serious illness: an individual suffering from a serious illness as provided for in Article 69-A, item IV, of Law No. 9,784 of January 20, 1999;
Individual Microentrepreneur, Microenterprise or Small Business (MEI, ME or EPP): a legal entity classified as an Individual Microentrepreneur (MEI), Microenterprise (ME), or Small Business (EPP), as defined by Supplementary Law No. 123 of December 14, 2006;
Scientific, Technological and Innovation Institution (ICT): a legal entity classified as a Scientific, Technological and Innovation Institution, as defined by Law No. 10,973 of December 2, 2004;
Startup: a legal entity classified as a startup, as defined by Supplementary Law No. 167 of April 24, 2019;
Green Technology: technologies relating directly to alternative energy, transportation, energy conservation, waste management, or sustainable agriculture, as detailed in Annex II of INPI Ordinance No. 247 of June 22, 2020;
Healthcare Treatment Technology: technologies involving pharmaceutical products and processes, as well as healthcare equipment and/or materials used for the diagnosis, prevention, and treatment of Acquired Immunodeficiency Syndrome (AIDS), cancer, rare diseases, or neglected diseases;
COVID-19 Treatment Technology: technologies involving pharmaceutical products and processes, as well as healthcare equipment and/or materials used for the diagnosis, prevention, and treatment of COVID-19;
Technology Requested by the Ministry of Health: technologies involving pharmaceutical products and processes, as well as healthcare equipment and/or materials related to Ministry of Health assistance policies and considered strategic within Brazil’s Unified Health System (SUS);
Technology of Public Interest or National Emergency: technologies covered by a public-interest designation resulting from an act of the Federal Executive Branch declaring a national emergency or public interest;
Release of Financial Resources: where the granting of the patent application is a condition for the release of financial resources by funding agencies or official national credit institutions in the form of economic subsidies, financing, or equity participation;
Applicant Alleges Infringement: where the applicant or owner possesses evidence indicating the likelihood that all or part of the subject matter of the patent application is being reproduced and/or commercialized without authorization;
Third Party Accused of Infringement: where a third party has been accused by the applicant or owner of unauthorized reproduction and/or commercialization;
Prior User of the Technology: where a third party simultaneously used, reproduced, sold, and/or imported all or part of the subject matter described in the patent application before the filing date and is being harmed, or is at risk of being harmed, by the filing of the technology after such prior use, production, sale, or importation; or
Patent Family Originating in Brazil: where the application belongs to a patent family whose earliest application was filed with the INPI or with the Brazilian Receiving Office (RO/BR).
The INPI’s Directorate of Patents, Computer Programs and Integrated Circuit Topographies (DIRPA) is responsible for determining whether the requests and patent applications satisfy the criteria established by INPI Ordinance No. 247 of June 22, 2020, and for publishing its decision in the Industrial Property Gazette (RPI).
Accordingly, when filing a request for prioritized patent examination with the INPI, it is important to carefully follow each step of the applicable procedure and submit all documents demonstrating that the application properly qualifies under at least one of the available categories. This helps avoid the issuance of a single formal requirement or even rejection of the prioritized examination request.
INPI Ordinance No. 247 of June 22, 2020, which governs prioritized patent prosecution before the INPI, is available at:
Comments