The ordinance came into force on April 1^st, 2021, and targets patent applications filed between Jan. 1^st, 2017 and Dec. 31^st, 2017. 

As stablished in the aforementioned ordinance, the preliminary official action will be issued in respect of the patent application that complies with the following requirements.

• It has not been submitted to the first technical examination by the INPI;
• There has been no request for any type of priority examination;
• It does not present a petition for examination subsidies from third parties or opinion subsidies by the Brazilian Health Regulatory Agency (ANVISA);
• It has a counterpart patent application with prior art searches carried out by other countries' Patent Offices*
  
  

*Such patent applications will be analyzed using the results of the searches already carried out. If the patent application related to the preliminary official action is excluded, such exclusion will also apply to their divisional applications. 

The preliminary official action presents a search report limited to the prior art documents cited in searches and/or in the technical examination carried out by other countries' Patent Offices, and requires the applicant to adapt the application and/or present arguments regarding the patentability requirements, according to the documents cited in the search report. 

As a novelty, the Ordinance establishes that after the response to the preliminary official action, in the continuation of the examination, it may be possible to complement the prior art search carried out by other countries' Patent Offices, with new prior art references not previously mentioned being raised, and the opinion of examination carried out by such Offices may be considered as a subsidy to the technical examination. 

Following the previous resolutions, from the date of publication of the preliminary official action, the BPTO provides a ninety-day legal term for the applicant to present a response, and the absence of a response within this period will result in the application's definitive shelving. In the event that the presented claim set is not adequate to the prior art references cited as impediments to patentability and whose arguments regarding the patentability requirements are not considered relevant, the application will be rejected.

Rodrigo Ayres
Consultant
Veirano Intellectual Property