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Brazil: Analysing the INPI backlog

18-12-2015

Otto Licks

In the first article of this series (WIPR September/October issue), we established that the ratio (number of filings per year divided by the number of examiners, divided by 12 months) is a useful metric for assessing the workload of various patent offices.

We also observed how the ratio evolved in the US Patent and Trademark Office (USPTO), European Patent Office (EPO), Japan Patent Office, China’s State Intellectual Property Office and the Korean Intellectual Property Office (KIPO) from 2010 to 2013. It is possible to further analyse and contrast the current position of the Brazilian Patent and Trademark Office (INPI) using my previous article as a reference.

It is important to observe that the INPI does not publish regular and complete statistics regarding its activities. For example, there are no precise yearly statistics on the overall pendency time of patent applications from filing to grant at the INPI. Based on experience, practitioners are aware that this pendency time is at least 11 years. The actual number of examiners is also missing from the INPI’s reports.

Table 1 depicts the INPI’s statistics from 2010 to 2013 covering the pendency time from filing to the issuance of a first examination report, as they will be sufficient for our purpose.

table1-inpi-patent-filings.jpg

The number of patent examiners is estimated based on the following factors:

According to official data from the Brazilian government (http://www.portaltransparencia.gov.br) there are currently 304 examiners at the INPI;

We estimate that as many as five examiners leave the patent office every year; and

According to the “INPI Management Report 2013” (http://www.inpi.gov.br/sobre/arquivos/relatorio_de_gestao_prestacao_de_contas_inpi_2013.pdf) 28 new examiners joined the patent office in 2012.

It is ascertainable from the above numbers that the Brazilian ratio is slightly higher than that of the USPTO (6.3 in 2013) and EPO (5.4 in 2013). Nonetheless, the backlog in the two latter offices is decreasing, while in Brazil it continues to increase at an alarming rate.

In addition, as indicated in Table 2, the INPI processes only a limited number of applications when acting as an international searching authority (ISA) under the Patent Cooperation Treaty (PCT).

table2-applicationsat-inpi.jpg

When compared to the above-mentioned Asian patent offices, it is clear that the INPI could easily manage to shoulder a higher workload (higher ratio) and still reduce the backlog. The example of the KIPO, whose ratio was 23.3 in 2013, provides a good illustration of this point.

Why does the backlog keep increasing in Brazil? A deeper look at official data from the Brazilian government (http://www.portaltransparencia.gov.br) partly provides an answer.

Of the 304 listed examiners at the INPI, 87 are not currently examining patent applications. A number of patent examiners are instead taking care of the INPI’s library, acting as user support officers, analysing licensing contracts, handling PCT formalities and teaching at the INPI’s Academy. In addition, the patent department at the INPI is subdivided into four coordination units and 20 divisions. The heads of each division and unit are patent examiners, but do not examine patent applications.

"IT IS CLEAR THAT THE CURRENT NUMBER OF EXAMINERS AT THE INPI IS MORE THAN ENOUGH TO START COPING WITH THE BACKLOG PROBLEM."

Nonetheless, even if we disregard the number of examiners not currently examining applications, the ratio remains at around 13 (still lower than JPO (16.5 in 2013) and KIPO’s).

To answer the initial question posed, it is clear that the current number of examiners at the INPI is more than enough to start coping with the backlog problem. Of course, increasing the number of examiners would be valuable. However, the backlog should already be following a decreasing trend.

Following the appointment of the new INPI president in August, the staff union (AFINPI) issued a letter rebutting the argument that the backlog problem is solely related to the lack of examiners at the office.

According to this letter, the INPI lacks the minimum required infrastructure and modern management policies. AFINPI also expressed its concerns regarding the excessive number of divisions at the INPI patent department and in relation to other positions that, although occupied by examiners, have no relevance to patent examination.      

In the next articles in this series, we will investigate how the huge backlog at the INPI came about, how performance is measured at the office, and whether the performance metrics that are used are adequate. 

Otto Licks is a partner at Licks Attorneys. He can be contacted at: otto.licks@lickslegal.com

Intellectual property, USPTO, PCT, ISA, INPI, patent backlog, KIPO, European Patent Office, EPO, JPO, , filing, patent, Otto Licks,

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