Brazilian PPH with the USPTO now on phase II: new opportunities for telecom and semiconductor under Rule #218/2018 (BRPTO’s gazette of May 08 th , 2018)

May 14, 2018

Brazilian PPH with the USPTO now on phase II: new opportunities for telecom and semiconductor under Rule #218/2018 (BRPTO’s gazette of May 08 th , 2018)

The BRPTO published on May 8, 2018, Rule #218/2018 implementing Phase II of the PPH Pilot program with the USPTO. Most relevant is the expansion of technologies eligible for PPH, now embracing applications claiming IT arts, which has the longest examination pendency at the BRPTO. Rule #218/2018 also indicates more International Patent Classifications (IPCs) related to oil, gas and petrochemical fields as eligible when compared to Rule#154/2015. The two tables summarize the IPCs accepted by this new phase:

Information technology arts

Oil, gas and petrochemical arts

To be accepted in Phase II of BRPTO-USPTO PPH Pilot Program, the Brazilian application must:
1. have its filing or Brazilian national phase entry notification duly published in the BRPTO’s;
2. have already been published by the BRPTO or have the corresponding international application
published by WIPO;
3. have its request for examination submitted to the BRPTO;
4. have all due annuity fees paid;
5. not have office actions pending on replies;
6. have not been accepted in any fast-track examination program;
7. not be involved in a lawsuit in Brazil; and
8. not be divided, except the original application, answering an USPTO office action for lack of unity of invention.

The BRPTO included a further eligibility requirement for oil, gas and petrochemistry-related applications: the application must now make explicitly reference to the oil, gas and petrochemical field in its claim chart and the applicant must indicate in the participation request the page and line of the claim chart in which the relation to these technical fields is explicitly evidenced.

The participation of the application in the BRPTO-USPTO PPH Pilot Program shall be requested by any or all the applicants via a specific electronic form. Amongst other documents requested by Rule #218/2018, the applicant must submit, together with the request (1) documents proving that the application meets the above-mentioned requirements; (2) a table including the correspondences between the BR application claims and claims considered as allowable by USPTO and (3) a copy of non-patent literature considered as prior art by the USPTO.

The BRPTO will evaluate the applications for PPH according to its request date. Applications that do not meet the requirements will either (1) be given the opportunity to correct any irregularity, case in which the BRPTO will issue an office action to be replied to within 60 days, or (2) have its participation in the PPH Pilot Program denied. The applicant may file an appeal against the decision denying participation in the PPH within 60 days from its notification, as long as all documents and information required for the request have been duly submitted with the participation request brief and the brief has been submitted within the legal term. Phase II will be limited to 200 applications, wherein 50 requests can be based on the positive opinion issued by the USPTO or BRPTO acting as ISA or IPEA. The program is also limited to one application per month per applicant, except in the last month.

Participation request briefs in Phase II will be accepted from May 10, 2018 until April 30, 2020 and this Rule will be in force until all apt applications reach a final decision.

The original Portuguese version of Rule #218/2018 is available here. Please contact us for its English version.