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Hot Topics in IP during 2023: Brazilian Patent Landscape highlights

The Patent Backlog Combat Plan, launched in 2019 by the BPTO to settle approximately 150,000 patent applications pending examination, was certainly one of the most successful projects in the Office over the last five years. The BPTO achieved a remarkable 96% examination rate by August 2023.

By Gabriela Neves Salerno, partner at Montaury Pimenta, Machado & Vieira de Mello.

1. Action Plan of the National Intellectual Property Strategy (ENPI)

In October 2023, the Interministerial Group on Intellectual Property (GIPI) published the 2023-2025 Action Plan for the National Intellectual Property Strategy (ENPI), aiming to promote an intellectual property system that ensures greater competitiveness and social and economic development in Brazil. The plan encompasses 63 actions and 161 deliveries across seven strategic areas. Measures to promote administrative efficiency, leading to a new target decision time for patent applications – a reduction from 6.9 years (as of December 2022) to 3 years by July 2025 – are among the objectives. A reduction from 3.7 months to 3.5 months is the goal for industrial design applications.

Other challenging goals of the plan include increasing Brazil’s position from 6th to 3rd position in the global ranking of countries in terms of trademark registrations and from the 12th to the 11th position in industrial design filings.

The initiatives outlined in the Action Plan include green technology matchmaking to leverage intellectual property for sustainable development. Other actions involve increasing diversity in the intellectual property system through e.g. training programs for women entrepreneurs. There are also plans for action in the educational sphere, with the aim of disseminating intellectual property culture in schools and universities.

Additionally, an intellectual property intelligence hub will also be established to identify technological trends across various areas of knowledge. Another relevant front that is being intensified in ENPI's plan is the criteria related to IP in calls for proposals to promote research projects using public resources that result in innovations.

2. BPTO's Strategic Plan for 2023-2026

2023 saw an increase in patent applications compared to the previous year, with a total of 27,918 patent applications filed - a 2.9% increase compared to 2022. The top five countries contributing to nearly 70% of total patent filings were the United States (30%), Brazil (20%), China (7%), Germany (6%), and Switzerland (5%).

Among other objectives, the BPTO aims to further increase patent filings and reduce prosecution time in the coming years. To achieve these goals, the Office launched a strategic plan for 2023-2026, focusing on nine pillars: (1) quality and agility in patent granting; (2) promotion of IP culture; (3) consolidation of Brazil's role in the international IP landscape; (4) recognition of BPTO's value to society; (5) digital transformation for improved user service; (6) modernization and expansion of service capacity; (7) retention of the workforce to maintain a high-performance service; (8) efficient and sustainable logistical and economic infrastructure support; and (9) improvement of governance, management practices, and institutional relationships.

Regarding patents and industrial designs, the plan proposes actions to automate processing flows by replacing current tools and implementing new ones, as well as simplifying workflows. Patent searches are set to be optimized by outsourcing to other sectors, such as universities. The use of artificial intelligence tools is equally pointed out as a resource to assist patent searches.

Additionally, the Strategic Plan presents actions to optimize the patent database by scanning the document collection and correcting possible errors and inconsistencies, in addition to updating information in accordance with the standards of the World Intellectual Property Organization (WIPO). Still in this regard, a new information search solution is proposed.

In line with quality improvement, the Strategic Plan proposes the development of an automated system for reviewing the quality and compliance of the examination of patent applications and industrial design registrations, as well as a research project aimed at gathering the impression of the quality of the examination for external users. The improvement of second-instance procedures (appeal phase) is also included in the Strategic Plan, in order to improve the quality of appeals and administrative nullity requests, in addition to guaranteeing their predictability and legal security.

3. Positive Results of the Patent Backlog Combat Plan

The Patent Backlog Combat Plan, launched in 2019 by the BPTO to settle approximately 150,000 patent applications pending examination, was certainly one of the most successful projects in the Office over the last five years. The BPTO achieved a remarkable 96% examination rate by August 2023.

4. Fast-Track Examination

Another successful BPTO’s project involves the implementation of various fast-track examination categories in recent years. Currently, the BPTO offers 17 types of fast-track examination for patent applications, according to the following division:

(a) In view of the cooperation

-PPH (Patent Prosecution Highway) agreements with the following Patent Offices: PROSUL, JPO, USPTO, EPO, DKPTO, BPTO-FR, UKIPO, CNIPA, APO, OEPM, PRV, KIPO, BPTO-PT, CIPO, PRH, and IPOS;

-Patent applications from patent families originally filed in Brazil.

(b) In view of the technology

-Patent applications seeking protection for green technologies;

-Patent applications covering technology for the diagnosis, prophylaxis, and/or treatment of AIDS, cancer, or rare or neglected diseases (Chagas disease, Dengue, Dengue Hemorrhagic Fever, Chikungunya, Zika, Schistosomiasis, Hansen's disease, Leprosy, Leishmaniasis, Malaria, Tuberculosis, Buruli ulcer, Neurocysticercosis, Echinococcosis, Yaws, Fascioliasis, Paragonimiasis, Filariasis, Rabies, Helminthiasis, and manifestations resulting from intoxication or poisoning by venomous or poisonous animals);

-Patent applications covering technology for COVID treatment.

(c) In view of the applicant

-Patent applications from individuals aged 60 or older;

-Patent applications from individuals with physical or mental disabilities;

-Patent applications from individuals with severe illnesses;

-Patent applications from micro-enterprises and/or small enterprises;

-Patent applications from Scientific, Technological, and Innovation Institutes;

-Patent applications from Startups.

(d) In view of the situation

-Patent applications whose granting is a condition to obtain financial resources;

-Patent applications whose object is reproduced by third parties without authorization;

-Patent applications in which third parties are accused of infringement;

-Patent applications with prior users of the technology;

-Patent applications for technologies resulting from public funding;

-Patent applications for technologies available on the market.

Among these categories, PPH agreements and the green patents program are the most used by foreign users of the patent system in Brazil. According to data from BPTO, there were 807 fast-track examination requests in 2023 based on PPH agreements and 143 requests related to green technologies. The average time from the fast-track request to the decision was 216 days for PPH and 231 days for green technologies.

Based on the 2023 data, it is expected that fast-track programs will be increasingly used by applicants wishing to expedite their patent applications in Brazil, given the BPTO's efficiency in reviewing these cases.

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Marcasur Magazine - Edición Nº 92
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