Those who have filed patent applications in Brazil have likely experienced very lengthy application pendency – sometimes even upwards of a decade. These delays are caused by a serious backlog of patent applications at the National Institute of Industrial Property (“the Brazilian Patent Office”). In some cases, strategies for expediting the examination process may be available to applicants who wish to minimize this delay.
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We recently met with Igor Simões and Erick Moreno, from international law firm Clarke, Modet & Co., to discuss two specific strategies for expediting examination: (1) expedited examination based upon infringement in Brazil and (2) expedited examination for “green technologies.”
Expedited Examination Based Upon Infringement in Brazil
Applicants can request expedited examination based upon alleged infringement of the claims of their Brazilian patent application. The request for expedited examination must be accompanied by a petition and some evidence of infringement, such as an invoice showing sales of an infringing product.
Requests for expedited examination of patent applications are appraised by a commission at the Brazilian Patent Office and decided by the Patent Director. The decisions are published in the IP Electronic Bulletin.
Expedited Examination for “Green Technologies”
Applicants can also request expedited examination of patent applications covering certain green technologies. Eligible technologies include those related to alternative energy, transportation, energy conservation, waste management, and agriculture. The Brazilian Patent Office has adopted the IPC Green Inventory to define those patents applications that are considered “green.”
This pilot program is limited to the first 500 applications that fulfill the requirements set forth by the Brazilian Patent Office. These requirements include, among other things, that the application have been filed on or after January 2, 2011 and that the application contain a maximum of 15 claims, with up to three independent claims.
For some companies, such as pharmaceutical companies, the long patent pendency in Brazil may be welcome, because the patent term in Brazil is no less than 10 years from the date of patent issuance. Those companies requiring Brazilian patent rights in the near term, however, may wish to consider the strategies above.