A evolução de pedidos de patente com análise pendente no INPI : construindo alternativas para proteção do depositante e diminuição do blacklog

• Autor(a) principal: Garcez Júnior, Silvio Sobral
• Data de Publicação: 2015
• Tipo de documento: Dissertação
• Idioma: por
• Título da fonte: Repositório Institucional da UFS
• Texto Completo: https://ri.ufs.br/handle/riufs/3410
• topic: Backlog; Patentes; Desenvolvimento Econômico; Propriedade intelectual; Inovações tecnológicas; Backlog; Patents; Economic Development; CNPQ::OUTROS

The National Intellectual Property Institute (INPI - Instituto Nacional da Propriedade Industrial) has been facing a chronic delay in patent application processing. The time for patent granting in Brazil increased four years in a decade, and it reached 10.8 years in 2013. The backlog (inventory of applications pending examination) reduces the effectiveness of the patent system since it leads to an environment of unreliability and legal uncertainty. Therefore, it distorts the main patent system purpose, namely, promoting the country´s economic and technological development. The herein presented study used the empirical and deductive method. The study was based on the doctrine, journals, scientific papers and management reports from INPI as well as from the world´s major patent offices (USPTO, EPO, and JPO) and jurisprudences. It was also based on the current legislation to trace the evolutionary framework of patent application pending examinations at INPI from 2010 to 2013. Thus, the current study aims to seek alternatives to be used by the Brazilian office to reduce patents´ backlog, as well as to discuss the appropriate legal solution to protect the applicants´ right during the patent granting procedure. Several operational and structural actions have been adopted by the National Industrial Property Institutes (INPIs) as alternatives to cope with the patent backlog at international level, namely: constant training, electronic tools development, new examiners´ hiring, outsourcing and international technical cooperation. As for the national context, the study aims to provide new priority examination services for micro and small businesses, universities and for venture businesses. The venture businesses proposal was inspired by the Japanese Office. The study also suggested using the procedure for short-life-cycle technology cases, since this category is undoubtedly sensitive to delays. Adopting the Preliminary Opinion on Patentability instrument on a mandatory basis and having the ad hoc scientists previously registered by INPI performing the procedure in partnership with the National Counsel of Technological and Scientific Development (CNPq - Conselho Nacional de Desenvolvimento Científico e Tecnológico) was the proposal suggested to backlog reduction without demanding big investments by INPI. Such a measure would not only reduce the legal uncertainty generated by the extensive time lapse pending without any action by the examiner, but it would also lead to the withdrawal of manifestly unfounded and no-quality requests, thus relieving the examiners´ workload and reducing the analysis time by up to three years. Finally, the mandamus showed to be the appropriate legal solution to protect the applicant´s right during the patent examination procedure.