PATENT BACKLOG – Preliminary Office Actions

According to the Resolutions INPI/PR Nos. 240 and 241, both of July 3rd, 2019, Brazilian PTO is issuing “Preliminary Office Actions” in order to try to reduce the Backlog.

The Examiners point out previous documents (Notice 6.22) or previous documents cited by Foreign Patent Offices (Notice 6.21), however, they do not perform the substantial examination, therefore eventual changes in the set of claims are not mandatory, the client should contest the prior documents cited within 90 (ninety) days.

If desirable to amend the set of claims, our Patent Team remind that according to Brazilian IP Law amendments which may broaden the original subject matter (considering the scope of claims presented for the examination) would not be acceptable. Likewise, Brazilian IP Law and Resolutions should be followed, for instance: amendments cannot infringe the articles 10 (it is not considered to be invention or utility model) and 18 (it is not patentable), both of Brazilian IP Law.

We remain at your disposal to provide you more details regarding this matter.