Chapters authored
Comparative Analysis of Appeal Procedures in the European, American and Brazilian Patent Offices
The right to appeal exists as a response to the two main characteristics of every human being. The first refers to the attitude of not settling for adverse decisions, which leads people to seek instruments to remediate these decisions, while the second is the possibility that every human being has to make mistakes and the need to correct these mistakes in decision-making acts that may have been mistaken. Therefore, an appeal is an instrument that enables review of a decision by a higher authority to obtain its modification or revocation. In the patent system, appeals are used basically to reverse decisions of patent examiners during the examination procedure as, for example, the decision to reject a patent. Although all patent offices have procedures for appeal against first-instance decisions taken by these offices, there are significant differences as to how this procedure is conducted in each office. This chapter will study the laws and regulations, rules and procedures on appeals in two of the main patent offices in the world – the European Patent Office – EPO and the United States Patent and Trademark Office – USPTO, and in the Brazilian Patent Office – INPI, pointing out the main differences between them.
Part of the book: Intellectual Property
A Methodology for Evaluation and Distribution of Patent Applications to INPI-BR Patent Examiners: A Case Study in the Electricity Field
This paper presents the development of a new methodology for evaluation and distribution of patent applications to the examiners at the Brazilian Patent Office considering a specific technological field, represented by classification of the application according to the International Patent Classification (IPC), and the variables corresponding to the volume of data of the application and its complexity for the examination process. After identifying the most relevant variables, such as the Specific Areas of Expertise (ZAE) of the examiners, a mathematical model was developed, including: (a) application of the principal component analysis (PCA) method; (b) calculation of a General Complexity Ratio (IGC); (c) classification into five classes (very light, light, moderate, heavy and very heavy) according to IGC average ranges and standard deviations; (d) implementation of a logic of distribution, compensating very heavy applications with very light ones, and light applications with heavy ones; and (e) calculation of a Distribution Balancing Ratio (IBD), considering the differences between the samples’ medians. The model was validated using a sample of patent applications including, in addition to the identified variables, the time for substantive examination by the examiner. Then, a correlation analysis of the variables with time and a comparison of the classifications according to the time and the IGC generated by the model were carried out. The results obtained showed a high correlation of the IGC with time, above 80%, as well as correct IGC classes in more than 80% of applications. The model proposed herein suggests that the three main relevant variables are: total number of pages, total number of claims, and total number of claim pages.
Part of the book: Intellectual Property