VOLUNTARY SUBSIDIES FOR EXPEDITION OF THE EXAMINATION OF PATENT APPLICATIONS

Normative Act No. 152, published on October 19, 1999, has established rules concerning submission of voluntary subsidies for the technical examination with the objective of expediting the examination procedures (please see attached English Language version of said Normative Act).

According to this Normative Act, on patent applications and on certificates of addition of an invention in which examination has already been requested but no office action has yet been published, it will be possible to present a petition with the objective of accelerating the examination procedures by subsidizing the Examiner with the following documents:

1. Copy of the patent granted in the country of priority or any equivalent patent granted in another country. It is necessary that whichever patent is furnished it has to be one granted in a country wherein patent applications are subjected to examination of merit prior to granting.
   
   

2. Simple translation into Portuguese Language of the claims as issued in the patent furnished as per 1., above.
   
   

3. Copy of the petition by means of which the examination has been requested.
   
   

Our professional charges for filing such a petition will amount to a minimum of around US$ 300.00. The costs involved with obtaining the Portuguese Language translation of the issued claims will have to be added to this figure, such translation costing US$13.00 per group of 100 translated words. The official fee is of around US$ 110.00, but will vary with the exchange rate.

Our comments:

1. The Brazilian Patent Office is struggling against a rather big, and always increasing, backlog of patent applications, standing at various stages of prosecution (also, but not only, at the examination stage).
   
   

2. The problem can not be summarized and focused on understaffing of Examiners.
   
   

3. The situation of our Patent Office is critical, inasmuch as the more basic services, such as simply attaching filed petitions to the appropriate dockets, are not performed with promptness.
   
   

4. It should be noted that our Patent Law already provides for the possibility of subsidizing the examiner, as per article 31, which reads as follows:
   
   

   “Art. 31 - Documents and information for aiding examination may be filed by interested parties between the publication of the application and the termination of the examination.”
   
   

5. Article 34, I, of Law 9279/96, foresees the possibility of the issuance of an office action on behalf of the Brazilian examiner, whenever he/she desires to obtain information on the results of examination for the grant of corresponding applications in other countries.
   
   

6. Examination procedures can only be initiated 60 (sixty) days after the application has been published and opened to public inspection (sole paragraph of art. 31), and the publication of filed applications is being made with delay.
   
   

This is an attempt by the Brazilian Patent Office to expedite examination, but we have serious doubts whether filing such a petition will indeed bring the announced results.

MINISTRY OF THE DEVELOPMENT, INDUSTRY AND FOREIGN COMMERCE - MDIC NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY OFFICE OF THE PRESIDENT - 09/09/99
NORMATIVE ACT - No. 152/99

Subject: Establishes the adoption of the International Classification of Goods and Services and other provisions

THE PRESIDENT OF THE INPI (Brazilian Patent and Trademark Office), using his prerogatives,

IN CONSIDERATION OF the backlog of patent applications, as yet unexamined by the INPI, and

WHEREAS such backlog may be jeopardizing to the filing applicants, including giving rise to uncertainties as to the extension of rights,

DECIDES AS FOLLOWS:

1. The applicants having filed a patent application as yet unexamined, that have already required the examination thereof, shall be entitled, in order to provide subsidies for the technical examination of their applications and as subsidiary contributions, in accordance with the provisions of Article 31 of Law No. 9279/96, to submit the following documents:
   
   

   1.1 For applications filed with a priority claim:
   

   1.1.1 A copy of the Patent, if the same underwent technical examination and was granted in the country of priority. 1.1.2 An uncertified translation of the set of claims, as granted in the country of origin. 1.1.3 A copy of the petition requesting examination of the patent application in Brazil.

   1.2 The patent issued in the country to which the priority claim is related, as referred in the preceding items, may be replaced by an equivalent patent having been granted in a country wherein the same has been subjected to a technical examination.
   
   1.3 The rules of the present Act are applicable to applications originally filed in Brazil, depending on evidence being provided to the effect that the patent has been granted in another country that performs the technical examination, the filing thereof having claimed the Brazilian priority, in the form established by the Union of Paris Convention.
   
   1.4 The same rules also apply to applications filed under the PCT and in the case of applications not claiming priority, provided that the same are duly filed by the applicant or authorized thereby and that the object of the application is substantially identical.
   
   

2. The applicant must submit a new set of claims, of equal content as the document cited in Sub-Item 1.1.1 of this Act, adapted in order to be in accordance with the provisions of Sub-Items 15.1.3.2, 15.1.3.2.1 and 15.1.3.2.2 and subparagraphs thereof, of Normative Act No. 127, of March 05, 1997.
   
   

3. If necessary, for compliance with Item 2, there should be submitted: amended specification, title, drawings and abstract.
   
   

4. The documentation referred to in this Normative Act should be submitted by means of the Form instituted by this Act (Petition of Voluntary Contribution to the Technical Examination), which is attached hereto.
   
   

5. For the purpose of application of this Normative Act, there are considered applications still pending examination by the INPI (Brazilian Patent and Trademark Office), those not having been the object of any publication of technical official action or invitation or summons to submit a statement, as well as the equivalents thereof.