Client Alert

BRPTO announces fast-track examination to technologies related to Covid-19

The BRPTO published, in its Official gazette #2570 of today, April 7, 2020, Ordinance #149/2020 (in force from today), which amends Rule #239/2019 to allow for fast-track examination of patent applications related to pharmaceutical products and processes, as well as medical devices and/or materials used for the diagnosis, prophylaxis and treatment of Covid-19.

Rule #239/2019 regulates the procedures for all fast-track examination programs of patent applications in Brazil, except for Patent Prosecution Highway (PPH) programs. Said rule already provided for fast-track examination of “health treatment technologies”, specifically to patent applications related to the diagnosis, prophylaxis and treatment of Acquired Immunodeficiency Syndrome (AIDS), cancer, rare diseases or (pre-defined) neglected diseases. In view of the current pandemic, and in an attempt to stimulate the development of solutions to fight Covid-19, BRPTO’s Ordinance #149/2020 altered Rule#239/2019 by including patent applications related to Covid-19 within those applications eligible for fast-track examination by the BRPTO.

The same provisions of Rule #239/2019 shall apply. However, we notice two important differences between the text of newly included Article 12-A and the text of Rule #239/2019 (please see items f and g below):‍

  • a. It will be considered eligible for fast-track examination if the patent application:
    • (i) has been filed for at least 18 months or has a request for early publication or, in case of international applications, has been published by the World Intellectual Property Organization (WIPO); and‍
    • (ii) has no division or amendment, voluntarily made by the applicant, between the request and the decision of the fast-track procedure;‍
  • b. The request for examination must have been filed;
  • c. In the case of divisional patent applications, the original and all the divisional applications shall have a fast-track request and shall meet the requirements to be eligible to fast-track examination;‍
  • d. The applicant is not allowed to voluntarily divide or amend the patent application prior to the publication of the first technical examination opinion by the BRPTO under penalty of annulment of the fast-track examination;
  • e. The request for fast-track examination to technologies related to Covid-19 must be submitted by the applicant or interested third party, individual or legal entity. This provision was already established by Rule #239/2019 for “health treatment technologies”;‍
  • f. The request for fast-track examination to technologies related to Covid-19 shall contain a clarification indicating the relation of the patent application matter with the diagnosis, prophylaxis and/or treatment of Covid-19. In other words, unlike other modalities contemplated by Rule #239/2019, it is not necessary for the matter to be defined in the set of claims; and‍
  • g. Differently from the other “health treatment technologies” eligible for fast-track examination, there is a time limit for requesting examination of patent applications related to pharmaceutical products and processes, medical devices and/or materials used for the diagnosis, prophylaxis and treatment of Covid-19, namely, June 30, 2021.‍

As to items a and b, considering that many of the technologies related to Covid-19 are currently under development, we can foresee the need to request for early publication, as well as the request for examination prior to the deadline (36 months from the filing date, or international filing date in case of PCT applications).

The original Portuguese version of Ordinance #149/2020 is available here. Please contact us for the English version.

Please contact us at patents@lickslegal.com for more information on this matter, we will be glad to assist you.

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