Efforts to reduce pending applications: timely grant of patents
A number of patent offices recorded large increases in patent applications received over the past two decades, with a threefold increase in patent applications filed worldwide between 1995 and 2016. The rapid growth in filings has led to an increased number of pending applications in some offices. Consequently, they face the challenge of conducting examination and processing patent applications in a timely manner.
The Patent Backlog Combat Plan of the Brazilian National Institute of Industrial Property (INPI)
Over the years, INPI has been seeking alternatives to reduce the number of pending patent applications, known as backlog. By early 2019, INPI backlog reached around 160,000 pending applications, while the number of examiners and searchers dedicated to patent examination is 332. The biggest impact of the backlog is the extension of patent term beyond 20 years, as stipulated in the sole paragraph of Article 40 of Law 9,279 of 1996 (IPL). In effect, that provision extends the patent term beyond 20 years if INPI is not able to grant a patent within 10 years from the filing date (unless the exceptional circumstances stipulated in the law exist). In 2018, 62% of the applications decided by INPI had the patent term extended under that provision. The long pendency period increases uncertainty as to whether the claims in patent applications are patentable or not, and has negative impacts on third party investments in the commercial exploitation of the claimed subject, particularly where the claims do not meet the patentability requirements.
A number of measures have been taken by INPI, such as increasing the number of examiners, standardization of internal procedures, publication of examination guidelines, automation of the operation and deployment of production-driven telework. While these measures contributed to the increased performance of examination, in 2018, INPI launched a Pre-Examination Pilot Project, which had as its premise the use of search results produced by other patent offices. Under this Project, as a first office action (Pre-Examination Office Action), INPI examiners cite prior art documents found by other offices, and invite the applicants to amend the claims and/or to submit technical arguments demonstrating its patentability over the cited prior art, within the period of 60 days. Of the applications that received the Pre-Examination Office Action, 22% were refused due to non-response. In 88% of the responses received, the applicants amended the claims, which resulted in an increase in the decision after the first office action. At the same time, the low number of appeal against the decisions of INPI is observed.
[huge_it_slider id=”15″]In view of the outcome of the Pre-Examination Pilot Project, the impossibility of hiring new patent examiners and the contingency of its budget, INPI launched a Backlog Combat Plan in 2019, designed to reduce by 80% the number of pending applications within two years. Use of the search results carried out by other offices as a promising measure to shorten the decision period is the main strategy of the Backlog Combat Plan, which institutionalized the Preliminary Examination Office Action that applies to patent applications with or without previous search report by other offices. It also adopted a more simplified examination methodology to decrease the number of examination steps.
Differently to the Pre-Examination Office Action, the Preliminary Examination prohibits additional search by INPI examiners if there is any search report prepared by another office. For those applications with a previous search report, INPI examiners cite prior art documents found by other offices, and invite the applicants to amend the claims and/or to submit technical arguments demonstrating its patentability over the cited prior art, within the period of 90 days. For patent applications that are filed only in Brazil, applicants receive a Search Report prepared by an INPI examiner and a standard Technical Report in which the applicant is requested to amend the application and/or present arguments to prove the patentability of the claimed invention. Preliminary Examination Office Actions do not apply to fast-track patent applications, applications that have been subject to third party observation or the National Agency of Sanitary Surveillance (ANVISA).
In addition to the above, INPI launched the Task Management Pilot Program in order to encourage the increased performance of patent examiners during the Backlog Combat Plan.
cialis generic australia One must also know about the dosage and the safety measures are the crucial and important point which should be taken into consideration while taking this medicine. They might also generic viagra tadalafil amerikabulteni.com be different from one treatment another. The Problem Erectile dysfunction (ED), although common in lots of men, is a topic most would consider buy generic levitra find that taboo. You will want to continue all medications unless your doctor asks you to go for viagra delivery it.
Patent Prosecution Highway (PPH)
In general, the PPH is a scheme enabling an applicant whose claims have been determined patentable/allowable in the Office of First Filing (OFF) or Earlier Examination (OEE) to benefit from the accelerated examination of the corresponding application in another office that agreed to participate in the scheme.
The Intellectual Property Office of the United Kingdom (UKIPO) and the Brazilian National Institute of Industrial Property (INPI) have concluded an agreement to launch a PPH pilot, which has been extended to run until July 31, 2020. The Delegation of the United Kingdom observed that the benefits of the PPH are:
(i) it allows a quicker, easier and more efficient examination process;
(ii) applicants gain accelerated processing; and
(iii) it is easy to set up with agreements with partner offices; and
(iv) it provides a good opportunity to work together with other offices.
The Delegation of Brazil noted that the PPH project had reduced the amount of examination work, had contributed to the acceleration of examination, and had improved the examination process. PPH agreements can be tailored to specific needs and requirements of each office, such as limiting the field of technology covered and the maximum number of requests that can be accepted per year and/or per applicant. Brazil INPI has concluded PPH pilot agreements with seven offices, the main difference being the technology covered by the agreements. The PPH agreement between UKIPO and INPI Brazil covers applications in the fields of biotechnology, electrical engineering and information technology, whereas it excludes the pharmaceutical field.
The EPO concluded PPH agreements with the offices of IP5, Australia, Brazil, Canada, Colombia, Israel, Malaysia, Mexico, Singapore, the Philippines, the Russian Federation and the Eurasian Patent Office (EAPO). At the end of the third quarter of 2018, the cumulative number of incoming PPH requests are: 5477 from Japan; 4187 from the United States of America; 679 from China; 392 from the Republic of Korea; 132 from Canada; and 90 from Israel. The number of requests from six partner offices are either one digit or zero. The cumulative outgoing requests from the EPO work are: 10,016 to the United States of America; 3,861 to Japan; 2,576 to China; 1,519 to the Republic of Korea; 456 to Canada; 304 to Israel; 258 to Australia 258; and 176 to Mexico. As regards the breakdown of the fields of technology of the applications under the PPH request, ICT, mobility and mechanics, healthcare, biotech and chemistry share approximately the same ratio, i.e. 1/3 each.
In CIPO, 9% of applicants request accelerated examination through the PPH program. Among the PPH applications, the first action allowance rate is 36% (compared with 4% in the cases of regular non-PPH applications). Although the claims contained in the Canadian PPH applications substantially corresponded to those allowable in another PPH partner patent office, non-conformity with the Canadian law is found in 62% of the PPH applications at the first action. Frequent defects noted in the first actions are clarity of claims (58.8%), minor informality (47.4%) and obviousness (18.8%), specification defects (13.1%) and lack of support and lack of novelty (12.0% each).
Source: SCP/31/3, DATE: NOVEMBER 18, 2019, Standing Committee on the Law of Patents, Thirty-First Session, Geneva, December 2 to 5, 2019