Osha Attorneys
Osha Attorneys
Osha Attorneys
Osha Attorneys
Attorney search
Search by

The collective expertise of our global team distinguishes OBWB in the field of Intellectual Property Law. We align our best resources to meet each client's specific needs and we treat each matter with the highest degree of attention and care.

12600 Hill Country Blvd.
Suite 275, Austin   TX 78738
P: 512.480.0667
F: 713.228.8778

Directions
Click here to Get directions.
12F, Excel Centre, 6 Wudinghou Street
Xicheng District, Beijing   100033

Directions
Click here to Get directions.
1200 Pearl St. Ste. 314
Boulder, CO   80302
P: 713.228.8600
F: 713.228.8778

Directions
Click here to Get directions.
8/F, Hangzhou Kerry Center
385 Yan An Rd.
Hangzhou, China   310006
P: +86.571.2689.2537
F: +86.571.2689.2700

Directions
Click here to Get directions.
1100 Louisiana Street
Suite 4900
Houston, TX   77002
P: 713.228.8600
F: 713.228.8778

Directions
Click here to Get directions.
2 Rue de la Paix
75002 Paris, France
P: +33.1.4494.8630
F: +33.1.4494.8631

Directions
Click here to Get directions.
Level 28 Shinagawa Intercity Tower A
2-15-1 Konan Minato-ku
Tokyo, Japan   108-6028
P: 81.3.6717.2877
F: 81.3.6717.2878

Directions
Click here to Get directions.
1701 Pennsylvania Ave.
NW Suite 200
Washington, DC   20006
P: 713.228.8600
F: 713.228.8778

Directions
Click here to Get directions.

An Office Action without Examination: Brazil has Ambitious Plan to Tackle Patent Application Backlog

AIPLA’s IP Practice in Latin America Committee recently sent a delegation to Rio de Janerio, which included committee member and Osha Liang partner, Ms. Carlyn Burton.  During this trip, the delegation met Mr. Claudio Vilar Furtado, President of Brazil’s Instituto Nacional da Propriedade Industrial (INPI) on August 22, 2019.  In particular, Mr. Furtado spoke to the delegation about two new resolutions issued on July 9, 2019, by the INPI.  These two resolutions embody his office’s efforts to eliminate the unexamined patent application backlog in Brazil.  Specifically, these two resolutions will streamline prosecution within a two-year timeframe.

Mr. Furtado described the streamlined process as a mechanism by which INPI can eliminate the backlog without lowering the quality of the patents issuing under this process or increasing the number of examiners (which is currently around 330 total).  Mr. Furtado further explained that approximately 80,000 patent applications should be decided each year under the streamlined process.  Accordingly, this rate of disposition should completely eliminate the backlog within a two-year period.

During the delegation meeting, Mr. Furtado was accompanied by Mrs. Liane Lage, INPI’s Director for Patents.  Mrs. Lage spoke in detail with AIPLA’s delegation about streamlining prosecution, and explained that INPI would issue “standardized office actions” under this process.   More specifically, a “standardized office action” will simply cite to prior art documents without providing examination or technical comments concerning patentability of claims in the application.  Following mailing of such actions, applicants will then have a 90-day period in which to amend claims and/or provide technical arguments concerning the patentability of the claims over the cited prior art.  Mrs. Lage further explained that examiners will primarily use Global Dossier and references cited in corresponding applications by major patent offices to produce these standardized office actions.  However, under this process, examiners may rely more heavily on documents cited by the European Patent Office.  Formal examination will begin after the applicant’s reply to the office action, but will not include further searching by the examiner.  Following a reply to the standardized office action by an applicant, the examiner will still have autonomy to determine whether to grant the patent based on the amendments or arguments provided.  Examination may also continue following the initial reply in order to address patentability, clarity, etc.  Thus, the applicant’s reply is not the only opportunity to put the application in condition for grant.

This INPI program was formally launched in August 2019, and initial assessments are that the process is working well. Mrs. Lage also reported results of an INPI implemented pilot program using the streamlined procedure, which saw no reply to a standardized office action filed in approximately 25% of the applications.  As such, these applications without a reply were immediately withdrawn. On the other hand, 45-50% of applications in the pilot program were immediately granted following a reply to the standardized office action.

In addition to INPI’s presentation, AIPLA’s delegation also attended a meeting with representatives at the Brazilian Federal Regional Court of Appeals for the Second Region, which is a specialized Intellectual Property Appellate Court.  The delegation further held a breakfast for AIPLA Women in IP, and also met with the Consulate General and the USPTO’s IP Attaché at the U.S. Consulate General.  Finally, the delegation joined a gathering of the IP Section of the American Chamber of Commerce.