In view of this change, as of January 2024 the BPTO will order the distribution and technical examination of patent applications based on the date of the actual submission of the examination request. This change aims to expedite patent decisions by encouraging applicants to request technical examination earlier.
The examination time significantly varies by technical area in Brazil
In view of the recent efforts through the backlog-combat program in Brazil, for some technical areas, like mechanics and agricultural technology, the BPTO is close to eliminating the backlog. Since applicants tend to request examination closer to the deadline, the BPTO is trying to incentivise them to request examination earlier, so that the BPTO may manage to reduce the backlog to less than 3 years in these technical areas. However, this scenario is far from true for some other technical divisions, for example biotechnology, telecommunications, and electronics, which still have an average examination time of 7-8 years from the filing date.
As for the possible real impacts of the new procedure, although official statistics are still not available, for a PCT application entering the Brazilian national phase about 18 months after its international filing date, requesting examination earlier could expedite examination in up to about 18 months. On the other hand, applicants that decide to keep requesting examination closer to the deadline might have their applications delayed should other companies start requesting examination earlier for that technical field.
Only restrictive amendments are accepted after requesting examination
Nevertheless, it is important to have in mind that in Brazil the date of examination request is a temporal milestone as to how we can amend the application or file divisional applications. Specifically, after examination is requested, amendments are only acceptable if they are intended to further restrict the claimed subject matter and/or to correct formal issues. Hence, any amendment intended to change or broaden the scope of protection of the claims will be rejected.
Moreover, these limitations are also applicable to divisional applications filed after the request for examination, that is, the claims of a divisional application should be restricted to the claims for which the examination of the original application was requested. Otherwise, the claims of the divisional application will be rejected.
In view of this new procedure and although requesting examination earlier may have positive impacts on the examination time for the application, applicants should still be mindful regarding the limitations for amendments after the examination is requested in Brazil.
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