The European Patent Office (EPO) just published its Patent Index 2019, below a summary of the key statistics.
The EPO received last year a record 181 000 patent applications, 4% more than in 2018.
In total, nearly half of all patent applications came from companies based in Europe, with Germany alone accounting for some 15%. From the other regions, US firms dominated with a quarter of all applications, followed by companies from Japan, China and South Korea.
In terms of growth, patent applications filed by European companies increased modestly. There was a strong rise in demand from the US. The steepest growth rates were posted by Asian companies, in particular Chinese and South Korean firms.
Top 10 applicants at the EPO in 2019
- 1.HUAWEI 3 524
- 2.SAMSUNG 2 858
- 3.LG 2 817
- 4.UNITED TECHNOLOGIES 2 813
- 5.SIEMENS 2 619
- 6.QUALCOMM 1 668
- 7.ERICSSON 1 616
- 8.ROYAL PHILIPS 1 542
- 9.SONY 1 512
- 10.ROBERT BOSCH 1 498
Among European countries with large volumes, the greatest increases in filings came from Sweden, the UK, and Switzerland. Filings from Germany remained stable and Italy saw moderate growth, while France and the Netherlands saw decreases.
Looking at countries with mid-range patenting volumes, Spain saw the biggest rise in applications. There were also increases in filings from Belgium and Austria.
Further significant growth was seen from companies in Portugal, Ireland, and Norway, albeit from small overall patenting volumes.
The patent applications filed with the EPO in 2019 also indicate Europe’s position as a key market for the next wave of digital transformation technologies.
Digital communication was the new top technology field at the EPO, reflecting the rapid development of 5G technologies.
China, the US, and Europe were the most active regions of origin. They each account for roughly a quarter of the patent applications in this field.
The second fastest-growing field was computer technology. It was fuelled by the growing importance of Artificial Intelligence. Patent applications concerned especially machine learning, data retrieval, image data processing, and pattern recognition. Overall, US companies led this field, with European applicants not far behind.
The dominant position of digital technologies was clearly reflected in the list of leading applicants. Huawei topped the table, followed by Samsung, LG, United Technologies and Siemens.
Overall, European companies retained the largest share in seven of the ten most active technology fields. These include transport, where Europe continued to excel in the automotive sector. The same was also true for clean energy technologies.
Source: www.epo.orgRead More
By Moeller IP.
Patent Linkage in Mexico
The Mexican linkage system refers to the cooperation between the Mexican Institute of Industrial Property (IMPI) and the Federal Commission for Protection against Health Risks (COFEPRIS) to avoid the granting of marketing authorizations for allopathic drugs which may infringe any in-force patent.
This linkage system was issued on September 19, 2003. It is established in articles 167 bis of the Health Supplies Regulations and article 47 bis of the Industrial Property Regulations which state the system procedure.
Authorization for an allopathic drug
Allopathic drugs are defined in article 224 of the Mexican Health Law as natural or synthetic substances having therapeutic, preventive or rehabilitative effects, which may be identified by their pharmacological activity, physical, chemical or biological characteristics and are presented in a pharmaceutical form.
Whenever a marketing authorization application for an allopathic drug is submitted to COFEPRIS, the applicant is required to either submit the documents which demonstrate that owns the patent or patents related to the active pharmaceutical ingredient (API), possess the corresponding license, both registered at the IMPI, or, according to the Mexican Linkage Gazette, declare under oath that it complies with the provisions applicable in patent matters.
In the case of the latter, COFEPRIS will request IMPI to confirm this statement. COFEPRIS will file a form detailing the following information about the marketing authorization application and deliver it to IMPI:
- Applicant of the marketing authorization
- Name of the API, salts as APIs or International Nonproprietary Name
- Chemical name according to the International Union of Pure and Applied Chemistry
- Structural formula of the API
- Pharmaceutical formulation, API and excipients
- Dosage form
- Therapeutic indications
- Drug presentations
- Drug characteristics
- Any additional information submitted by the applicant
The above information is considered confidential, thus only COFEPRIS and IMPI are aware of its contents.
Based on the information received, IMPI will have ten business days to confirm whether an in-force patent may be infringed. If no patent is found to be infringed, the marketing authorization application will comply with this administrative requirement and follow its normal procedure. Otherwise, IMPI will notify COFEPRIS which in turn will notify the applicant of the possible infringement. COFEPRIS will request the applicant to submit the corresponding license and if the applicant fails to do so the marketing authorization will be denied.
Mexican Linkage Gazzete
Regarding the Mexican Linkage Gazette, this document is published semi-annually by IMPI and its purpose lies in keeping a record of the in-force Mexican patents associated with specific APIs.
Patents listed in the Mexican Linkage Gazette include those of composition of matter, formulations, medical uses or combination thereof. These are listed automatically by the IMPI whenever a patent is granted. Alternatively, patent owners may also request the Mexican PTO to include a certain patent in the Gazette. Lastly, patents related to processes or methods of producing the drugs are expressly excluded from being published in the Mexican Linkage Gazette.
Mexican Patent Linkage System is limited to cases related to IMPI and COFEPRIS involving potential patent litigation between patent owners and applicants submitting new marketing authorizations. It was designed to avoid unnecessary litigation from these private parties, thus Its current design does not allow the direct participation of the patent owners or applicants of new marketing authorizations.
Patent owners may participate indirectly through ensuring its most relevant patents are listed in the Mexican Linkage Gazette. On the other hand, applicants of new marketing authorizations may submit additional information to argue its product does not infringe the patents listed in the Mexican Linkage Gazette.
Given the limited participation from the parties in the current Patent Linkage System so far, patent owners have resorted to filing patent infringement procedures to prohibit the production and commercialization of the infringing products while applicants of new marketing authorizations have resorted to nullity actions over patents. Both procedures are handled by the IMPI and its ruling may be appealed before the Federal Court of Administrative Justice, which, in turn, may be appealed before the Collegiate Courts.
Overall, in our opinion, the Mexican Linkage System remains imperfect as it could benefit from increasing the transparency of the procedure to both parties, patent owners and applicants of new marketing authorizations.
Source: www.gob.mx/impiRead More
Newly Amended China Patent Examination Guidelines on Computer-Implemented Inventions (CII), Effective February 1, 2020
Guidelines Patent Examination
The China National Intellectual Property Administration (CNIPA) formally announced on December 31, 2019 the newly amended Patent Examination Guidelines will come into effect on February 1, 2020. The Guidelines were amended to clarify the patentable subject matter in patent applications relating to CII.
Most important amendments
The most important amendments are summarized below:
- Section 6 is added to Chapter 9 of Part II of the Guidelines, and regulates the examination of claims that include abstract features such as algorithm features or business method features.
- When examining a claim, abstract features such as algorithm features or business method features should not be simply separated from technical features. The claim should be examined as a whole to analyze aimed technical problems, utilized technical means, and achieved technical effects.
- If a claim merely includes abstract features without any technical features, the claim should be rejected as a rule or method of mental activity under Art. 25 of the Patent Law.
- If a claim includes any technical features besides abstract features such as algorithm features or business method features, and as a whole does not constitute a rule or method of mental activity, the claim should not be excluded under Art. 25 of the Patent Law and should be examined to see whether the claim constitutes a technical solution under Art. 2.2 of the Patent Law.
- When examining whether a claim including algorithm features or business method features constitutes a technical solution, all features in the claim should be considered as a whole. If the claim aims at technical problems, utilizes natural laws as technical means, and achieves technical effects, the solution of the claim is determined as constituting a technical solution under Art. 2.2 of the Patent Law.
- When assessing novelty or inventiveness of a claim, all features including both technical features and algorithm features or business method features should be considered as a whole.
- Nine examination examples of claims that include algorithm features or business method features are provided.
- The specification including algorithm features or business method features should clearly and completely describe the solution used to solve technical problems. On the basis of technical features, algorithm features or business method features should support each other and interact with the technical features.
- Claims of patent applications involving algorithm features or business method features should recite the algorithm features or business method features that support each other and interact with technical features.
Source: www.cnipa.gov.cnRead More
The European Patent Office (EPO) Publishes Grounds for its Decision to Refuse Two Patent Applications Naming a Machine as Inventor
EPO – Applications refused
The EPO has published on 27 January 2020 its decision setting out the reasons for its recent refusal of two European patent applications in which an Artificial Intelligence (AI) system was designated as the inventor.
Filed by an individual in autumn 2018, the applications EP 18 275 163 and EP 18 275 174 were refused by the EPO following oral proceedings with the applicant in November 2019, on the grounds that they do not meet the legal requirement of the European Patent Convention (EPC) that an inventor designated in the application has to be a human being, and not a machine.
The machine called “DABUS”
In both applications, the machine called “DABUS”, which is described as “a type of connectionist artificial intelligence”, is named as the inventor. The applicant stated that he had acquired the right to the European patent from the inventor by being its successor in title, arguing that as the machine’s owner, he was assigned any intellectual property rights created by this machine.
In its decisions, the EPO considered that the interpretation of the legal framework of the European patent system leads to the conclusion that the inventor designated in a European patent must be a natural person. The Office further noted that the understanding of the term inventor as referring to a natural person appears to be an internationally applicable standard and that various national courts have issued decisions to this effect.
Moreover, the designation of an inventor is mandatory as it bears a series of legal consequences, notably to ensure that the designated inventor is the legitimate one and that he or she can benefit from rights linked to this status. To exercise these rights, the inventor must have a legal personality that AI systems or machines do not enjoy.
Finally, giving a name to a machine is not sufficient to satisfy the requirements of the EPC mentioned above.
The decisions to refuse the two patent applications can be appealed by the applicant within two months at the EPO’s independent judiciary, the Boards of Appeal.
Source: www.epo.orgRead More
European patent EP 2771468
European patent EP 2771468 relates to the CRISPR/Cas9 gene-editing technology held by the Broad Institute of Harvard and MIT, Massachusetts.
The EPO opposition division had revoked the patent for lack of novelty in view of intermediate prior art. This prior art became relevant because the opposition division did not acknowledge the patentee’s claim to priority from a US provisional application naming more applicants than the subsequent PCT application from which EP 2771468 is derived. Since the omitted applicant had not transferred his rights to the applicants of the PCT application the priority claim was considered invalid.
On 16 January 2020, the EPO Board of Appeal in case T 844/18 dismissed the patent proprietor’s appeal against the decision of the opposition division and thus confirmed the revocation of the patent. The board did not refer questions to the Enlarged Board of Appeal.
Reasons for revocation
The reasons for the board’s decision will be issued in writing in due course.
In 2012, Professor Jennifer Doudna of the University of California, Berkeley and Professor Emmanuelle Charpentier were the first to file a patent for the discovery of CRISPR/Cas9. Subsequently, Professor Feng Zhang at the Broad Institute was granted a fast-tracked patent based on the use of CRISPR to edit the genomes of eukaryotic cells. Since then, both institutions have competed for numerous patents with overlapping rights across multiple jurisdictions.
The Broad’s EPO patent was originally granted based on evidence of their original US patent filings. However the Broad’s earliest US applications, filed in 2012, listed Professor Luciano Marraffini of Rockefeller University, New York, as one of the inventors, but subsequent Broad applications, in the US and Europe do not include him. Because the list of inventors is not the same, the EPO declared the early US filings are not valid evidence that their claim dates back to 2012, and as such cannot be used to show the Broad’s claim predates that of competitors, including UC Berkeley.
The Broad has said that nine of their 21 CRISPR/Cas9 patents in Europe could be affected by the ruling which “does not involve the actual scientific merits of the patent application, but the interpretation of rules that dictate what happens when the names of inventors differ across international applications.”.
Source: epo.orgRead More
A delegation from Cambodia visits the EPO
A delegation from Cambodia led by Senior Minister of Industry and Handicraft Cham Prasidh visited the EPO on 31 October 2019 to meet with a team from the EPO headed by President António Campinos.
President Campinos and Senior Minister Cham reviewed the implementation so far of the EPO’s validation agreement with Cambodia. Under the agreement, which entered into force on 1 March 2018, applicants to the EPO can request validation of their European patent applications and European patents in the country. Cambodia was the first Asian country to recognise European patents on its territory.
“We are proud of the joint work done and results achieved over the past two years,” said EPO President Campinos. “Cambodia is one of the fastest-growing economies in Southeast Asia and now belongs to the group of countries with a solid global patenting strategy. The strengthening of Cambodia’s patent system through the validation agreement with the EPO is good for the local economy. For European companies, it provides further business and investment opportunities by extending the geographic coverage of their European patents to Cambodia.”
Senior Minister Cham said: “The validation system is a part of our long-term strategy to attract foreign investment. It is also an important means to boost national innovation. The validation system offers a shortcut for inventors to have their invention, already patented by the EPO, validated and protected almost immediately. Investors interested in using Cambodia as a springboard for exporting their products to privileged markets will benefit from seeking protection for their invention in Cambodia.”
Bilateral co-operation agreement
During the meeting, the EPO and Cambodia also signed a bilateral co-operation agreement for 2020. It aims at strengthening the capacity of the Ministry of Industry and Handicraft to administer patents and to promote an IP and patent culture in the country. Under the agreement, EPO experts will train staff at the Ministry, and a particular focus will be put on increasing understanding of the usefulness of patent information for universities and small businesses. A series of workshops will also be held to explain the functioning of the patent system to national stakeholders.
Patent applications in Cambodia
Cambodia has so far received 85 patent applications in 2019 (up from 67 in 2018), the majority of them being foreign applications. The Patent Cooperation Treaty entered into force in Cambodia in December 2016. The number of European patent applications for which a validation fee has been paid for Cambodia has risen to more than 60 in the past month alone.
Source: www.epo.orgRead More
Agreement between Brazil and Europe
Memorandum of Understanding – Enhanced Technical and Strategic Partnership
Brazilian PTO and the European Patent Office (EPO) signed a Memorandum of Understanding on an Enhanced Technical and Strategic Partnership on Tuesday, November 26th, aiming to improve cooperation between Brazil and Europe in the area of patents. The agreement was signed by BrPTO President Claudio Vilar Furtado and EPO President Antonio Campinos at the Institute’s headquarters in Rio de Janeiro.
BrPTO’s president Claudio Vilar Furtado stressed the importance of the agreement to stimulate investment in innovation and industrial property, focusing on the generation of new patents, especially in partnership.
– In this agreement between BrPTO and EPO, Brazilians and Europeans are united so that patents are a central element of a business environment that drives innovation – said the president of BrPTO.
The agreement between the EPO and the largest patent office in Latin America aims to strengthen the patent system in Brazil and Europe to encourage innovation and economic development, as well as to promote trade and investment between companies. two regions.
– Brazil is an essential partner for the EPO and an important market for European companies – said EPO President Antonio Campinos, who added: – This agreement is a milestone in our cooperation and is proof of the economic importance of close ties between our regions. Cooperation aims to ensure efficient patent examination and the granting of high-quality patents. This will benefit local innovative agents and international patent applicants, who can increasingly expect similar conditions to protect their inventions around the world.
Memorandum of Understanding – Patent Prosecution Highway (PPH)
During the ceremony, both offices also signed a Memorandum of Understanding to renew their Patent Prosecution Highway (PPH) pilot program. The new PPH, effective December 1st, will be open to patent applications in all technology fields.
In relation to the enhanced technical and strategic partnership agreement, BrPTO and EPO will cooperate in strengthening local capacity to search and analyze patent applications by training and discussing best practices, sharing tools and exchanging databases. patent data. In addition, by examining patent applications corresponding to applications already processed by the EPO, BrPTO will leverage the search reports in its own review process to further enhance quality and efficiency, freeing up resources to support local innovation. The agreement’s activities will be based on the two-year work plan agreed between the two institutions.
Brazil is the largest economy in Latin America and its trade with Europe accounts for over one third of the total European Union (EU) trade with the region. The EU is also the largest foreign investor in Brazil, with investments in various sectors of the Brazilian economy.
Agreement between Mexico and EPO
Memorandum of Understanding (MoU) – Reinforced Partnership
The EPO has signed a Memorandum of Understanding (MoU) on Reinforced Partnership with the Mexican Institute of Industrial Property (IMPI), further strengthening the longstanding co-operation between Europe and Mexico in the area of patents. The MoU was signed on 4 November 2019 in Mexico City by EPO President António Campinos and IMPI Director General Juan Lozano.
“Mexico is a very important partner for us, and our offices have already worked together to support innovation for 25 years” said EPO President Campinos. “Through our joint projects on the Cooperative Patent Classification, the EPO’s online patent search tool EPOQUE Net, comprehensive data exchange and judicial training we have brought our patenting procedures and work more closely in line. We are now entering a new phase in our co-operation, extending it to more strategic areas, with a view to making our patent systems as efficient, user-friendly and relevant as possible for innovators in both regions.”
The IMPI Director General Juan Lozano underlined the importance of the strategic alliance with the EPO to enhance the use of Mexican resources dedicated to the examination of national patents, as well as to accelerate applications previously examined by EPO, issuing “more patents, faster, as well as reducing the backlog”.
He said that the MoU will promote the exchange of information and good practices, and the Institute will be able to benefit from training, certification, tools and technical support provided by the EPO in a framework of collaboration.
Through the Reinforced Partnership, the EPO and IMPI will join forces to develop a number of activities aimed at increasing efficiency, timeliness and quality of the patent grant process with a view to promoting investment and technology transfer between Europe and Mexico. The EPO will support IMPI in strengthening search and examination in fast-growing and emerging technology fields such as the Internet of Things (IoT) and Industry 4.0. At the same time, IMPI will make effective use of EPO work products, tools and standards to ensure a high quality, timely and efficient examination of both national first and second filings.
According to figures from the World Bank and the European Commission, Mexico is the 11th largest economy in the world (EUR 2.2 trillion) with a strong focus on manufacturing and a population of almost 130 million. The country has strong macroeconomic institutions, and is open to trade and private investment. The EU is Mexico’s second-biggest export market after the United States.
Source: www.epo.orgRead More
Agreements between DKPTO and INPI
On 7th October 2019, the Danish Patent and Trademark Office, DKPTO and the Brazilian National Institute of Industrial Property, INPI have signed three agreements whose main objective is to increase and develop the innovation activities, including the generation and trading of Industrial Property assets, such as patents. Agencies working in scientific and technological research in both countries are expected to get closer.
The agreements, which are the result of good collaboration between the Danish and the Brazilian authorities, allow the two countries to join efforts in crucial economic areas such as services, health care, clinical testing, clean energy, and even food and agribusiness.
Research, Development, and Innovation (RDI)
The first agreement aims to encourage and develop cooperation between companies from both countries in Research, Development, and Innovation (RDI). Potential participants are already being evaluated in the various regions of Brazil. One of the expected results of this work is the increase in the number of patents and other industrial property assets under co-ownership, i.e. involving two or more partners.
New Patent Prosecution Highway (PPH)
The purpose of second agreement is to improve/expand the process of streamlining the analysis of Brazilian patents in Denmark and vice versa, allowing applicants in Denmark and Brazil to obtain corresponding patents faster and more efficiently. This will be made possible through a new Patent Prosecution Highway (PPH) agreement, broader than the current one (http://www.inpi.gov.br/menu-servicos/patente/projeto-piloto-pph). The existing PPH with Denmark, which began on 01st September 2018 and lasts for two years, includes areas within machinery, environment, and energy. According to the Foreign Ministry and the Brazilian authorities, the next agreement will be expanded to include new areas.
The third agreement involves the next stage of an Industrial Property asset: commercialization. It refers to the IP Marketplace, an online trading platform for these assets, working as a display window with trademarks, patents, and industrial designs. Today, around 6,000 users across 157 countries are registered. Participation is free of cost and the platform is open to companies, universities, and the public at large.
IP Marketplace is also a collaboration platform for inventors across the world, who can become acquainted with innovations in their fields of knowledge and meet researchers. According to the president of INPI, Cláudio Vilar Furtado, Brazilian trademarks and patents may be seen by other inventors, who may be interested in trading these assets, bringing positive effects on the innovation system in Brazil and, finally, on the economy as a whole.
By Vivianne Cardoso Banasiak, Client Relationship Manager
BR PTO – Fighting the Patent Backlog
The year of 2018 was marked by harsh criticism on how the Government was dealing with the Brazilian Patent Office’s (BR PTO) backlog problem. However, since January 1st, 2019 Brazil has a new president, Mr. Jair Bolsonaro, establishing a new political environment. Aligned with the campaign promises, the Brazilian PTO no longer reports to the Ministry of Industry, Foreign Trade and Services, but to the newly created, particularly powerful, Ministry of Economy (which now includes Planning and Foreign Trade). The BR PTO is under the Special Secretariat for Productivity, Employment and Competitiveness, led by Carlos Alexandre da Costa, a former member of the transition team of the new president. On January 8th, 2019, the Ministry of the Economy announced the nomination of Mr. Cláudio Vilar Furtado as the new President of the Brazilian Patent Office. Mr. Furtado is an economist with Doctoral Degree in Business Administration and, aligned with the premises of the new Government, set fairly aggressive goals for BR PTO in the coming years, mainly related to the patent backlog.
For years the BR PTO has struggled to reduce its patent backlog in order to process applications within reasonable timeframes. This is a long-standing problem and several measures have been introduced aiming to minimize the big delays. This article presents an overview of the BR PTO’s measures to reduce its patent backlog and how the new Brazilian government intends to deal with this problem.
As mentioned, over the years several actions have been adopted by the BR PTO in an effort to reduce the backlog. However, in 2017 and 2018 the BR PTO implemented and consolidated certain innovative actions that greatly contributed to the reduction of the backlog, including the hiring of more patent examiners, optimisation of the flow and control of processes, automation of procedures, consolidation of policies to encourage productivity (eg, telecommuting), efforts in the scanning of documents still pending an image, the implementation and consolidation of priority examination programmes, the review of former resolutions regarding priority examination of applications and the formalisation and extension of Patent Prosecution Highway (PPH) agreements.
Actions against the patent blocklog
Table 1 summarizes the actions taken by BR PTO against the patent backlog
|Fast track_Patent Examination_General cases|
|Applicant aged 60 or above; Applicant suffers from functional or mental disabilities or other severe disease; Applications under specific situations, such as when the unauthorized reproduction of the subject matter of a patent application is taking place in Brazil or when and where an applicant is in need of a granted patent to receive BR funds to exploit the subject matter of the patent||151/2015|
|Preliminary opinion||Applications claiming Brazilian priority (first filed in Brazil).||123/2013|
|Green Technologies||Applications related to eco-friendly and green technologies||175/2016|
|Brazilian priority||Applications first filed at the BRPTO||212/2018|
|Micro and Small entities||Applications filed by Brazilian micro and small entities||211/2018|
|Institutes of Science and Technology||Applications filed by Brazilian Institutes of Science and Technology||220/2018|
|Fast track Patent Examination of pharma related applications||Applications related to diagnosis, prophylaxis and treatment of AIDS, cancer, rare diseases or (pre-defined) neglected diseases||80/2013|
|PPH agreements with different offices all over the world||USPTO||April 30, 2020||218/2018|
|JPO||March 31, 2021||184/2017 and 235/2019|
|EPO||November 30, 2019||202/2017|
|SIPO||January 31, 2020||209/2018|
|UKIPO||July 31, 2020||222/2018|
|PROSUR (Argentinian, Chilean, Colombian, Costa Rican, Ecuadorian, Paraguayan, Peruvian and Uruguayan Patent Offices)||June 30, 2019||224/2018 and 229/2018|
|DKPTO||August 31, 2020||223/2018|
|Recruitment of new examiners||More than 200 new patent examiners. Total of 332 patent examiners|
|Optimization of internal procedures – Guidelines||Utility Model||298/2012|
|Patent exam_Block I – Title, Specification, Claim Chart, Drawings and Abstract||124/2013|
|Patent Exam – Biotechnology Inventions||144/2015|
|Patent Exam – Computer implemented inventions||158/2016|
|Patent exam_ Block II – Patentability||169/2016|
|Patent exam – Chemical Field||208/2017|
| Code 6.20|
|Analysis of patents using the results of searches in other national or regional patent offices.||227/2018|
Moreover, in 2018 an external consultancy evaluated the BR PTO procedures and mechanisms of recruitment / training of examiners. The consultancy held at BR PTO involved the UK Ministry of Foreign Affairs and the British Intellectual Property Institute (UKIPO), with the support of the former Ministry of Industry, Foreign Trade and Services (MDIC), aiming to optimize the internal procedures in order to reduce the patent backlog.
Techincal partnership with CAS
As recently reported in our blog, another measure that the BR PTO adopted to mitigate the negative effects of its patent backlog was the technical partnership with CAS (American Chemical Society) for the use of artificial intelligence tools to expedite the examination of patent applications. It was initiated on January 8, 2019 with the aim to provide patent examiners with a comprehensive set of prior art in the relevant field of technology, as well as information already published that may be relevant to the examination.
All these efforts are showing positive results. It was observed a high increase (77.5%) in patent grants, rising from 6,250 in 2017 to 11,090 in 2018, and a reducing by 7.4% in the patent backlog with respect to 2017. As a result, BR PTO intends to maintain and expand the fast track options, entering into, for instance, new PPH agreements with Russia (ROSPATENT), South Korea (KIPO), Israel (ILPO) and Mexico (INPI).
The Automatic Grant System
However, despite all the efforts, the patent backlog is still massive_ the year 2018 closed with 208,341 patent applications pending a first instance decision _ leading the BR PTO to propose, by far, the most controversial action to mitigate the problem: The Automatic Grant System_ a new Regulation for a simplified allowance procedure that would establish the rules for an application to be automatically allowed (without substantial examination). Until today, the Regulation has not been implemented.
According to the INPI´s 2018 Activity Report, the average decision time for patent applications in Brazil is currently 10 years, with pharma and IT patent applications reaching a maximum average of 13 years. The INPI Action Plan of 2018 states the challenging goal of reducing the average decision time to 5 years from the filing date. Thus, the battle against the patent backlog in the BR PTO really seems to be based on the simplification and streamlining of technical procedures for examination of patent applications by using the work already done by other patent offices in the world. Such strategy is in line with the INPI Action Plan of 2018.
The arrival of 2019 has been accompanied by many changes in the Brazilian Patent Office (BPTO). On January 1st, 2019, Brazil´s new president, Mr. Jair Bolsonaro, took office and, on February 11th, 2019, Mr. Claudio Vilar Furtado was announced as the new president of the BR PTO. In one of his first speeches, Mr. Furtado reiterated that the goal is to arrive in 2021 with a patent backlog of 5 years (from the filling date) and that, in a first moment, the automatic granting procedure is not considered as a possibility. However, he pondered that if this goal is not achieved, he may reconsider the automatic granting procedure as a solution.
BR PTO Conclusions
As a conclusion, and in face of the goals established for BR PTO in the coming years, it is clear that a deep paradigm shift is going to happen at the BR PTO. Brazil has the largest economy in Latin America and an efficient patent system, guaranteeing satisfactory safeguarding of rights, is of major importance to foreign investors and to Brazilian progress.
Mr. Furtado has the mission of reforming and reorganizing the current system established at the BR PTO. We will see how these changes will impact the Industrial Property in Brazil and if the BR PTO will finally win the battle against its massive patent backlog. After all, the property right laid down in the National Constitution and the Industrial Property Law aims to boost the country’s technological and economic development.