The attainment of patent registration undergoing technical examinations by the Brazilian Patent and Trademark Office (BPTO) (or in Portugues: Instituto Nacional de Propriedade Industrial-INPI), is subject in two decisions by this organization: the acceptance (order 9.1) or rejectance (order9.2) of the application.
Each decision can affect the progress of the request differently based on technical requirements, which may lead to its suspension for 60 to 90 days depending on the dispatch code, which will continue untill the depositor responds.
In the first scenario, where the request is approved, the applicant is required to pay a fee for issuing the patent letter. On the contrary, if it is 9.2 the applicant will receive an unfavorable evaluation for not meeting the required legal criteria. In this case, the applicant must submit an appeal and deposit a resource regarding the decision within a 60-day time frame.
But how to prepare this resource? What are the points that can be used to respond to order 9.2? With a primary goal of reducing the likelihood of rejection due to non-compliance with the provisions of art. 8 of the LPI, this article aims to provide guidance to the reader on writing a document that has a higher chance of being approved by the technical staff at BPTO.
Wha IS THE DISPATCH 9.2?
According to the table of codes for requests, patents, and certificates of additional invention published in RPI 2126 on 10/04/2011, the description of order 9.2 – REJECTION is as follows:
“the request was rejected for not meeting legal requirements as per the technical opinion. A copy of this opinion can be obtained through model form 1.05. The depositor has 60 days from this date to appeal. “
From the provided explanaion in above it can be drawn that If a patent application fails to meet the merit requirements, outlined in art. 8 of the Industrial Property Law, it will receive an unfavorable Opinion.
“Art. 8º To be patentable an invention must meet the requirements of novelty, inventive activity and industrial application.”
The BPTO technical staff conducts evaluations on novelty, inventive activity, and industrial application. In the case of evaluating the order 9.2, a group of examiners between 3 and 4 is constituted. Furthermore, it is important to note that the Examiner responsible for the technical and formal requirements during the request analysis will not be included in the technical team referenced above.
As this is the last chance to reverse the rejection of the patent application, the applicant needs to structure a solid argument based on technical and/or legal aspects to defend the invention. Therefore, reusing arguments in different orders during the request examination may not be an efficient strategy.
TIPS FOR PREPARING THE RESOURCE
While the examiners review the patent application on legal bases, the applicant should provide supported resources based on the technical knowledge, guidelines, and patent doctrines of LPI.
Resolution No. 169, issued on July 15, 2016, is a set of Patent Application Examination Guidelines that instruct examiners on how to assess the patentability requirements of an invention. The document is organized into seven sections covering inventions, industrial applications, prior art, novelty, inventive step, Markush-type claims, and compositions.
Each chapter examines how to analyze a particular requirement for a patent application, providing definitions of terms commonly used by Examiners to reject inventions, including “evident” and “obvious,” for instance. By using these resources, writers can obtain excerpts and definitions that aid in countering the BPTO’s Opinion 9.2.
Therefore, to prepare an argument against the published decision and address the reasons given for rejecting the patent application, it is crucial to understand the guidelines and prior art documents.
For instance, the Resolution includes guidelines on values and numerical ranges that determine whether an order with quantitative data like a technical document is new or not compared to the said document. Thus, understanding how the technical examination team evaluates can greatly assist in preparing the appeal.
The writer should check for inconsistencies in the Examiner’s arguments. The BPTO technicians are experts in their fields and in the guidelines and laws governing patent examination. Nevertheless, the presented allegations may have exploitable loopholes. It is worth noting that granted patents in Brazil aim to solve technical problems.
Highlighting the significance and frequency of the technical issue that the invention seeks to resolve and its proposed solution, along with demonstrating how existing solutions are inadequate, are strong arguments to counter the BPTO examining board. Referencing scientific articles for technical inventions or news from reputable international organizations in relevant fields can provide additional support for your claims.
Examiners may challenge the invention claim table by citing excerpts from the prior art documents mentioned in the technical opinion. Therefore, it is crucial to organize the writing in a logical order to clarify what is being argued, the basis, and the approach.
For instance, an innovative pen features a digital clock that is coupled with its ink cartridge. The clock alerts the user on the ink dispensing status and how much ink is left. It may seem groundbreaking to the writer, but for the Examiner, this invention is not new or inventive.
During the examination, the examiner cited a specific paragraph in document 1 that anticipates the independent claim 1 of the claimed invention. To demonstrate that the invention pertains to distinct matters, it is necessary to list the technical distinctions between it and the aforementioned prior(s). Demonstrate to the examiner which laws, guidelines, or articles the invention’s technical parts fit into, showing compliance with the merit requirements. Conclude that the technical characteristics based on the aforementioned legislation support the invention’s originality and novelty over the prior art by refuting the examiner’s argument.
The routes to reach order 9.2 are varied. For instance, the technical staff at BPTO may view non-compliance with the legal requirements for patenting an invention (art. 8 of the LPI) based on previous documents presented during the examination’s technical opinions.
Understanding the laws and guidelines for responding to a rejection is crucial as it represents the applicant’s final opportunity to request the petition’s approval.
Therefore, it is not advisable to repeat arguments from previous requests without additional explanation. This approach may reinforce examiner’s doubts and undermine the appeal.
The MNIP team consists of proficient specialists who specialize in searching for precedents, drafting patents, and addressing BPTO ‘s requirements. Please reach out to us via our website.