INPI creates new possibilities of expedited patent examination
The ordinance creates two types of faster procedures in Brazil
The Brazilian Patent and Trademark Office (INPI) created two new possibilities for prioritized patent examination in Brazil through Ordinance No. 294/2020. The regulation took effect on September 1st, 2020.
With this new ordinance, in addition to the hypotheses previously provided for (available
here), the modalities of “Technology Resulting from Public Financing” and
“Technology Available on the Market“ have become accepted conditions for the faster procedure of patent examinations.
The first concerns the “patent procedure whose claims were the result of direct financial support arising from public revenues with the express purpose of their development”. The second, in turn, refers to the “patent procedure whose all or part of the claims have been licensed, offered for sale, imported, or exported, taking the Brazilian market as reference”. Among other requirements, to be eligible for differentiated processing, the patent application must have been filed for at least 18 months or with a requirement for anticipated publication.
The type of Technology Available on the Market is conditioned to an application filed by the applicant, owner, or third party and must include, among other requirements:
- copy of a document that demonstrates that the patent application has been licensed, offered for sale, imported, or exported;
- a formal statement issued by the applicant, owner, or third party stating that the obtained document refers to all or part of the claim in the patent procedure.
An expedited procedure
From the time a patent application entries in the accelerated procedure, INPI has up to 30 months to complete its analysis, which is a big step compared to the current average of 8 to 10 years for the regular examination.
The fact is that INPI has been modernizing itself and looking for ways to clear its backlog, being able to fulfill the analysis of expedited patent examinations in an average of 13 months.
It is worth mentioning that these new highlighted modalities will be especially positive for the Brazilian market, mainly from an international point of view.
For more information on patents and licenses for exploration, as well as technology transfer contracts, get to know Mattos Filho’s
Intellectual Property practice.