Prioritized examination

Published in Apr 17, 2015 04:41 PM Updated in Dec 01, 2020 04:25 PM

INPI provides prioritized examination for applications involving protection of industrial property rights through the use of patents. The laws and regulations cover several types (situations that allow prioritized examination). If you have difficulties in choosing the type, complete this questionnaire.

It is important to follow the step by step to apply for prioritized examination and/or for how to correctly respond to the requirements.

On July 1, 2019, INPI initiated a project for improving the types of prioritized examination and the ways to assess the applications. You may follow up on the progress of the project with the statistics.

Notices

The former “prioritized examination” adopted a new model, which has a more comprehensive concept. The “prioritized examination” was restricted to applications in the line of patent applications pending technical examination. On the other hand, the new concept includes all activities of patent applications/registrations – from submission of documents for the application to the end of the processing in INPI (including dismissal, rejection, or extinction).

From another perspective, that also means that the interested parties are entitled to prioritized examination regardless of the procedural phase. For example, an elderly person is entitled to priority in his/her change in ownership (even after the granting of the patent).

In parallel to such change, INPI is currently in a process of remediation of its patent database. During this process, applications for “prioritized examination” without a decision were identified. Such pending applications were all converted into the new model. Since the process is still pending, such applications/registrations are entitled to prioritized examination for all activities related to the patent.

The acceptance or rejection of the prioritized examination does not interfere at all with the patent rights. In other words, regardless of the result, the patent shall continue to be effective until its extinction, and the holder must continue to fulfill the other responsibilities related to his rights as established by law.

NEW PILOT PROJECTS (AUGUST 11, 2020)

INPI already offers 16 types of prioritized examination (out of which 14 are directed to the general public and 2 to public entities).

In order to include all users of the system, as of September 1, we will offer two more important groups: applications/registrations with technology already available in the market and with technology resulting from public funding.

The prioritization of the examination of patent applications with technology already available in the market will promote an increase in legal certainty, with consequent improvement of the Brazil business environment. Additionally, there is also an option for third parties interested in the technology to apply for prioritization of the examination, stimulating the innovation process.

The investments in innovation entail high risks and uncertainties for the feasibility of new projects. Therefore, public promotion agencies have been important contributors to such innovation process, dividing the risks with the businessmen. Thus, the prioritization of the examination of applications with technology resulting from public funding will accelerate the development of new technologies.

INPI is accomplishing its mission to ensure the protection of Industrial Property with quality, agility, and efficiency, in order to contribute to the innovation, competitiveness, and economic growth of the country.

NOTICE ABOUT COVID-19 (JUNE 1, 2020)

Considering the pandemic declared by the World Health Organization, its impacts on public health, and the need for short-term, medium-term, and long-term measures to protect the population from the virus, INPI has created a type of prioritized examination of patent applications related to “pharmaceutical processes and products and equipment and/or materials for use in health, for the diagnosis, prophylaxis, and treatment of COVID-19”.

As it is possible to note, the type covers several inventions and utility models, their components, and correlated items. It is possible to mention (among other things) instruments for conducting medical examination; surgical instruments; artificial respiration; devices or methods especially adapted to convert pharmaceutical products into special physical or administration forms; devices to administer medicines; preparations for medical purposes; methods or devices to sterilize materials or objects in general; disinfection or sterilization of air; specific therapeutic activity of chemical compounds or medicinal preparations; personal protective equipment (PPE); containers especially adapted for medical or pharmaceutical purposes; containers, lids, furniture, or supports especially adapted for surgical or diagnostic devices or instruments; personal vehicle or accommodation especially adapted to patients; and specific use of cosmetics or similar preparations for personal hygiene.

We know that, although the disease is new, many of those products and processes are already used to fight against this and other diseases and their symptoms. Thus, INPI is interested in allowing the prioritization, both to encourage the development of new technologies in this area and to reduce the time required for the decision on the patent application. Therefore, it is worth highlighting that the patent application does not need to be dedicated to or explicitly mention the new virus, as long as the applicant submits an attachment to the application form clarifying it. This document must include the relationship between the matter claimed and the treatment of COVID-19 and/or its symptoms, and it is valid even if such symptoms are present in other diseases. This clarification will be duly assessed by the patent examiners before the prioritized examination is granted.

It is possible to request prioritized examination after generating GRU No. 279, object of the petition: Technology for treatment of Covid-19; paying the amount of the service; sending the electronic form with attachments.