Patent focus: a quick guide for fast-track examination in Brazil

This guide has the objective of summarizing all types of fast-track examination available in Brazil in order to assist applicants in choosing the best way of getting a patent faster in view of the various situations in which the Brazilian PTO can provide an accelerated examination.

When did the Brazilian PTO start to accept requests for fast-track examination? In which situations?

The first time the Brazilian PTO issued rules related to this subject was in 2006. The fast-track examination could only be requested by the applicant in three situations, namely:

• if the applicant was 60 years old or more;
• if the object of the application was being reproduced in Brazil without applicant’s consent; or
• if a granted patent was a condition for the applicant to receive financial aids.

Third parties being accused of potential infringement of the object of an application were also allowed to request accelerated examination of this application.

In addition, the government could request fast-track examination for patent applications whose object was related to national emergency or public interest.

Therefore, for many years, if the patent application did not fit within any of the above situations, the only way of accelerating the examination was by taking a court action based on the principle of efficiency. In other words, the applicant had to allege before the federal court that it was not reasonable to wait for many years (sometimes for more than 10 years) for the analysis of a patent application.

How has the fast-track examination program improved over the years?

The Brazilian PTO improved its fast-track system by making agreements with renowned patent offices around the world. Moreover, fast-track programs related to important global issues were implemented, such as the Green Patent Program. Most of these fast-track measures were first implemented as a pilot program with limited number of applications taking part per year and specific rules in order to guarantee that the Brazilian PTO would be able to efficiently accelerate their examination. After testing and making the necessary adjustments, most pilot programs became permanent. As a result, the Brazilian PTO currently has more than 15 different ways of fast-tracking the examination of a patent application depending on the situation of the applicant or the nature of the application.

Which types of accelerated examination does the Brazilian PTO provide?

The Brazilian PTO divides the types of fast-track examination into four main categories, namely: (A) related to the type of applicant, (B) related to the situation/nature of the application; (C) related to the technology of the application; and (D) related to cooperation with other jurisdictions.

Which are the possible ways of accelerating examination under category (A) - related to the type of applicant - and which are the requirements requested by the BPTO?

It is possible to expedite the examination of a patent application in Brazil in the following situations related to the applicant:

1. if the applicant is 60 years old or more;
2. if the applicant bears a physically or mentally disabling disease;
3. if the applicant bears a severe illness;
4. if the applicant is a micro or small company, or an individual microentrepreneur;
5. If the applicant is an Institution of Science, Technology and Innovation; or
6. If the applicant is a Startup.

If the applicant is 60 years old or more, a copy of an official ID must be presented along with the fast-track examination request. For items 2 and 3, a medical statement must be submitted to the Brazilian PTO, and for items 5 and 6, the applicant must present a document issued by the Brazilian government stating the type of company/institution.

As to the costs related to the above-mentioned types of accelerated examination, no official fees are due in situations 1 to 3, while in situations 4 to 6 an official fee must be paid to the Brazilian PTO.

Which are the possible ways of accelerating examination under category (B) - related to the situation/nature of the application - and which are the requirements requested by the BPTO?

It is possible to expedite the examination of a patent application in Brazil in the following situations related to the situation/nature of the application:

1. if a granted patent is a condition for the applicant to receive financial aids;
2. if the object of the application is being reproduced in Brazil without applicant’s consent;
3. third parties being accused of infringement; or
4. third parties formerly using a technology that was later filed as a patent.

In the situation where patent granting is a condition for receiving financial aids, the applicant is requested to submit a copy of the contract with the funding agency stating that the financial aids are bound to the grant of a patent. In cases 2 and 3, proof of the infringement/accusation of infringement must be presented, as well a copy of the cease and desist letter sent by the applicant. Lastly, in situation 4, the third-party must submit proof of the former use of the technology.

Which are the possible ways of accelerating examination under category (C) - related to the technology of the application - and which are the requirements requested by the BPTO?

It is possible to expedite the examination of a patent application in Brazil in the following situations related to the technology of the application:

1. if the application covers a “green” technology (environmentally friendly technology);
2. if the application covers a technology directed to the diagnosis, prophylaxis and/or treatment of AIDS, cancer, rare or neglected diseases; or
3. if the object of the application is related to a pharmaceutical product, process, equipment and/or material for use in the diagnosis, prophylaxis and/or treatment of COVID-19.

In any of situations 1 to 3, the applicant only needs to submit a statement alleging that the patent application is related to one of the above-mentioned technologies and pay the fast-track examination fees. Then, the Brazilian PTO will analyze the request and decide if the application is indeed related to the alleged technology.

Which are the possible ways of accelerating examination under category (D) - related to cooperation with other jurisdictions - and which are the requirements requested by the BPTO?

It is possible to expedite the examination of a patent application in Brazil in the following situations related to cooperation with other jurisdictions:

1. if the application belongs to a patent family which first application was filed in Brazil; or
2. under the Patent Prosecution Highway (PPH) Program.

The chart below summarizes the main information about the Patent Prosecution Highway projects that are currently running in Brazil:

are the main administrative requirements to request fast-track examination in Brazil?

Besides the specific requirements that depend on the type of fast-track request, there are some other formal requirements that must also be observed:

- The application must have been published;

- The examination must have been requested;

- The application must not have been subject of any other expedited examination procedure in Brazil; and

- The application cannot be voluntarily divided or amended by the applicant between the request for expedited examination and the BPTO’s decision on said request. 

How long does it take until a final decision is issued for fast-tracked patent applications?

According to data provided by the Brazilian PTO, the time frame depends on the fast-track program, but considering all types of fast-track programs available in Brazil, it takes 21 months on average. Considering only the PPH requests, this time frame drops to about one year. On the other hand, if the application is related to a green technology, it takes around 23 months until a final decision on the merits is issued.

Fonte/Source: Lexology https://www.lexology.com/library/detail.aspx?g=a8b7ba0d-96f9-40b1-936e-6fbf701d6b9c