On 1 January 2021 Ordinance 404 came into force, establishing Phase II of the Patent Prosecution Highway (PPH) Programme in Brazil. Phase II was published by the Brazilian Patent and Trademark Office (BRPTO) in the last week of 2020 and modifies the limits and requirements for requesting participation in the PPH Programme, which are detailed below. With this new phase of the PPH Programme, the previous Resolution 252 (establishing Phase I) has been revoked.
PPH Programme
The PPH Programme allows the examination of a patent application to be expedited in Brazil whenever a corresponding patent has been granted in one of the countries participating in the programme, upon the applicant's request.
The main differences established by Phase II are as follows:
- Up to 600 PPH requests are permitted each year.
- Up to 150 PPH requests per International Patent Classification section are permitted each year.
- One PPH request per applicant is permitted each week.
- The patent family may be initiated in any foreign office with a PPH agreement (eg, an application which was first filed in the United States Patent and Trademark Office (USPTO), but which has a corresponding European Patent granted by the European Patent Office (EPO), is now eligible).
- The official fee will be refunded for requests filed after the limits set out in points one to three above have been reached.
- No appeal is possible when a request is refused.
Despite these changes, the other requirements to participate in the PPH Programme remain the same:
- The application must have been published.
- The examination of the application must have been requested, but must not have started.
- The application cannot be voluntarily divided or amended by the applicant between the request to take part in the PPH Programme and the BRPTO's decision on this request.
- The application must define subject matter in a similar or more limited way than the one considered patentable by the office of first filing (OFF) for the application which belongs to the same family, even considering differences due to translations. The inclusion of subject matter for which the OFF has not performed any search or technical examination is prohibited, even if the claimed subject matter is more limited.
Participating countries
The below table shows the foreign offices which have a PPH agreement with the BRPTO and the duration of such agreements.
|
Office |
Duration |
OFF |
Filing date |
|
Japan Patent Office |
From 1 December 2019 to 30 November 2021 |
Brazil or Japan |
At least 18 months prior to the request |
|
USPTO |
From 1 December 2019 to 30 November 2024 |
Brazil or the United States |
As above |
|
EPO |
As above |
Brazil or Europe |
As above |
|
Danish Patent and Trademark Office |
As above |
Brazil or Denmark |
As above |
|
UK Intellectual Property Office |
As above |
Brazil or the United Kingdom |
As above |
|
China National Intellectual Property Administration |
From 1 January 2020 to 31 December 2024 |
Brazil or China |
As above |
|
Austrian Patent Office |
From 1 January 2020 to 31 January 2025 |
Brazil or Austria |
As above |
|
Swedish Intellectual Property Office |
From 1 February 2020 to 31 January 2025 |
Brazil or Sweden |
As above |
|
Korean Intellectual Property Office |
From 1 April 2020 to 31 March 2025 |
Brazil or South Korea |
As above |
|
Intellectual Property Office of Singapore |
From 1 May 2020 to 30 April 2025 |
Brazil or Singapore |
As above |
Participation in Phase II of the PPH Programme can be requested from 1 January 2021 to 31 December 2024. According to the latest data made available by the BRPTO, the average term between the filing of a PPH request and a final decision is 165 days.
Comment
The PPH Programme and the anticipation of Phase II benefits applicants which are willing to obtain an expedited grant decision for a patent application by taking advantage of a previous examination carried out by any of the above foreign offices.
For further information on this topic please contact Rodrigo Moraes Costa or Rodrigo Klein at Montaury Pimenta, Machado & Vieira de Mello by telephone (+55 21 2524 0510) or email (rThis email address is being protected from spambots. You need JavaScript enabled to view it. or This email address is being protected from spambots. You need JavaScript enabled to view it.). The Montaury Pimenta, Machado & Vieira de Mello website can be accessed at www.montaury.com.br.
Source: International Law Office - https://www.internationallawoffice.com/Newsletters/Intellectual-Property/Brazil/Montaury-Pimenta-Machado-Vieira-de-Mello/BRPTO-anticipates-Phase-II-of-Patent-Prosecution-Highway-Programme?utm_source=ILO+Newsletter&utm_medium=email&utm_content=Newsletter+2021-01-18&utm_campaign=Intellectual+Property+Newsletter