INPI’s efforts bear fruits on 2018

By Pedro Henrique Borges de Figueiredo, partner at Dannemann Siemsen

It is impossible to discuss IP in Brazil without touching the subject of INPI’s backlog. INPI’s yearly activity report issued on December 2018 brings many encouraging results in this regard, as a consequence of the efforts performed along the last several years in order to streamline procedures and improve productivity. Such efforts include increasing staff, digitizing procedures and improving internal rules. 

The yearly report describes favourable results for most services performed by INPI. For instance, INPI reports an increase in the number of trademark decisions by 240% between 2014 and 2018, leading to a 62% reduction of the backlog. Likewise, INPI reports an increase of the number of decisions for industrial designs by 260%, leading to a 77% reduction of the backlog in the same time frame.

It is hard to dispute among the users of INPI’s services that the backlog in the examination of patent applications is one of most concern. In this regard, 2018 marks the second consecutive year wherein the backlog has decreased in more than a decade. The reported pending number of applications for patent of invention has decreased by 7,7% between 2016 and 2018. Although encouraging, the number of patent applications filed at INPI has also decreased since 2014. Since 2016, the number of patent applications filed at INPI has decreased by 13%. Therefore, it remains to be seen whether INPI will be able to further reduce the backlog in case there is a trend reversal of new filings.

Apart from the number of pending patent applications, other indicators show that INPI has increased its productivity in the examination of patent applications. For instance, an increase of 185% in the number of non-final decisions between 2014 and 2018 is reported. Further recent efforts are also expected to bear fruits over the coming years. For instance, the technical field with the largest backlog is the pharmaceutical field, which has a combined backlog with ANVISA. INPI and ANVISA issued a joint ordinance on April 12, 2017 which finally settled that ANVISA’s “prior consent” is only required for patent applications relevant to Brazil’s Universal Healthcare System or deemed to cover a substance prohibited in Brazil. Furthermore, said joint ordinance also ended ANVISA’s issuance of office actions and decisions regarding patentability merits, which have been replaced by a written opinion which will be considered by INPI upon performing substantive examination. 

Other recent efforts for reducing the backlog include a streamlined office action for compliance with the requirement regarding access to Brazilian genetic resources, a pre-examination pilot program wherein the applicant is invited to submit comments and/or amendments regarding the patentability of the claimed invention in view of the prior art cited in other jurisdictions for the same family prior to INPI’s substantive examination, as well as pilot PPH programs which INPI has initiated with patent offices including DKPTO, EPO, PROSUR, SIPO, UKIPO and  USPTO, albeit limited to specific technological areas. These efforts began on 2017 and intensified on 2018. Several patents have already been issued under these programs, which have been generally acknowledged as successful. Therefore, it is expected that pre-examination and PPH programs should be expanded in the coming years, bringing some relief to INPI’s backlog.