Following a freedom of information (FOI) request filed by Licks Attorneys, the Brazilian Patent and Trademark Office (INPI) has disclosed new information that sheds more light on its backlog problem.
This is relevant because the patent backlog grows bigger every day. The administration praises the fact that the backlog is increasing at a slower pace compared to previous years, but the main reason is that applicants are abandoning applications which have been pending for as much as 14 years.
The exact number of patent examiners at the INPI is hard to obtain, as the organisation does not make available accurate and updated figures. Additionally, several patent examiners do not actually work on examining patents.
What are the patent examiners doing?
Based on official information previously made available by the Brazilian government, it was stated that (i) the INPI had 304 examiners; and (ii) 87 of these examiners were not examining patents, instead performing other tasks unrelated to patent examination.
In response to our FOI request, the INPI informed us that the actual number of examiners is 328. Six of them are working outside the INPI in other government agencies, leaving 322 examiners. But how many of them actually examine patents? According to the INPI, only 191—approximately 60%.
The INPI disclosed that 237 examiners are working in the INPI’s DIRPA, the equivalent of the Office of the Commissioner for Patents, while 85 have been assigned to other departments in the INPI. But the fact that an examiner is working in the DIRPA does not mean that he or she is actually examining patents: 46 of the DIRPA’s examiners are carrying out other activities (237 DIRPA examiners minus 191 actual patent examiners).
At the DIRPA, 25 examiners hold management positions and therefore do not examine patents. So, why are there 21 examiners not examining patents or holding management positions? Licks Attorneys has filed a follow-up FOI request with the INPI to clarify this point, but the administration has yet to answer it.
"With only 60% of its examiners actually examining patent applications, the INPI has been increasingly falling behind in terms of productivity."
Turning to the 85 examiners allocated outside the DIRPA but within the INPI, one comes across some striking figures. For example, 19 examiners have been assigned to the DICIG, the office in charge of, among other things, recording licensing contracts and software, and 38 are at the DICOD, which focuses on policy and international affairs.
Moreover, 25 are working at the president of the INPI’s office—six examiners working there have been assigned, on a full-time basis, to the Internal Affairs Office (the activities of which do not require the specific knowledge and training of patent examiners).
Only 11 examiners working outside the DIRPA who do examine patents were identified: those working at the CGREC, the Patent Trial and Appeal Board, which is charged with rendering decisions on appeal from examiner decisions and post-issuance challenges to patents.
With only 60% of its examiners actually examining patent applications, the INPI has been increasingly falling behind in terms of productivity. According to data provided by the office, between 2005 and 2015 an average of 8,000 first examinations were completed by the DIRPA per year. A growing backlog should therefore come as no surprise: in the last few years, approximately 30,000 patent applications were filed yearly with the INPI. Productivity must improve.
Data provided by the INPI has revealed that, on average, a patent examiner performs only four examinations per month. On the other hand, the INPI stated that it takes an examiner 2.33 days on average to perform an examination. This means that, if an examiner focused his or her attention entirely on patent examinations, he or she would be expected to perform 9.4 examinations per month on average (22 business days divided by 2.33).
However, the INPI has explained that “in addition to examinations, an examiner can also carry out other examination-related activities, such as drafting technical opinions for lawsuits, classifying patent applications, etc”. Our follow-up FOI request also contains questions about exactly how much time is spent on each of these “examination-related activities”.
Based on the information the INPI has disclosed, one can confirm that far too many INPI examiners do not examine patent applications and are therefore failing to contribute towards tackling the INPI’s backlog problem.
Otavio Beaklini is a patent expert at Licks Attorneys. He can be contacted at: firstname.lastname@example.org
João Marcelo Lima is an attorney at Licks Attorneys. He can be contacted at: email@example.com
Otavio Beaklini, João Marcelo Lima, Licks Attorneys, INPI, patent, backlog, productivity,