Happy New Year! New ordinances for 2022 already on track!

January 3, 2022

Ordinance #51/2021: Phase II of IP Showcase pilot project (Vitrine de PI)

The BRPTO has launched Phase II of the IP Showcase pilot project on the publication of information regarding industrial property assets available for commercial exploitation. In this second phase, the PI Showcase has been expanded to include industrial property assets resulting from trademarks, industrial designs, and computer programs – in addition to industrial property assets resulting from patent cases, which were already encompassed by Phase I. The project was established by BRPTO Ordinance #51/2021 and published in its Official Gazette #2658 on December 14, 2021. The new ordinance is available at the BRPTO's website, and its original version (in Portuguese) can be downloaded here.

Ordinance #52/2021: Preliminary OA program for pending Brazilian applications with foreign counterparts

Ordinance #52/2021, published in BRPTO's Official Gazette #2658 on December 21, 2021, proceeds with the Patent Backlog Combat Plan. It changes the examination of pending patent applications filed until December 31, 2016, with prior art search reports issued by foreign patent offices, International or Regional Organizations under the preliminary OA program. The main change concerns the possibility of a supplementary prior art search to be carried out by the examiner after the preliminary OA is issued. This new Ordinance came into force on December 21, 2021. It is available at the BRPTO's website, and its original version (in Portuguese) can be downloaded here.

Ordinance #53/2021: Phase II of BRPTO's Fast-Track (FT) program addressses patent cases whose subject matter has already been made available in the Brazilian market

Ordinance #53/2021, which implements Phase II of BRPTO's Fast-Track (FT) program and addresses patent cases whose subject matter has already been used, produced, licensed, sold and/or imported/exported taking the Brazilian market as reference was published in BRPTO's Official Gazette #2659 on December 21, 2021. 400 applications will be accepted in the program per year. The applicant may request the FT examination of one application per week. The program is also limited to 100 applications per IPC Section (100 applications per section per year). This new Ordinance came into force on January 1, 2022. It is available at the BRPTO's website, and its original version (in Portuguese) can be downloaded here.

Ordinance #54/2021: BRPTO updates the unified Fast-Track program

Ordinance #54/2021 updates the BRPTO's unified Fast-Track (FT) program and postpones the deadline to request expedited examinations for applications of Covid-19-related technologies. The deadline for requesting expedited examinations for patent applications whose subject matter is related to pharmaceutical products and processes and to equipment and/or materials for use in health for diagnosis, prophylaxis, and treatment of Covid-19 patients has been postponed until December 31, 2022. This Ordinance also encompasses the following Fast-Track possibilities:

  1. Applications/patents whose applicant/patentee is an individual over 60 years of age;
  2. Applications/patents whose applicant/patentee is an individual with disabilities;
  3. Applications/patents whose applicant/patentee is an individual with severe health conditions;
  4. Applications/patents filed by individual microentrepreneur or small entity;
  5. Applications/patents whose applicant/patentee is a Science, Technology, and Innovation institution – ICT;
  6. Applications/patents whose applicant/patentee is a startup entity;
  7. Applications/patents covering green technologies;
  8. Applications/patents related to diagnosis, prophylaxis, and treatment of Acquired Immunodeficiency Syndrome (AIDS), cancer, rare diseases, or neglected diseases;
  9. Applications/patents related to diagnosis, prophylaxis, and treatment of Covid-19;
  10. Applications/patents encompassing pharmaceutical products and processes of interest to the drug policies and pharmaceutical assistance of the Ministry of Health and the Public Healthcare System (SUS);
  11. Applications/patents relevant for national emergency or public interest;
  12. Applications that need to be granted as a condition for obtaining financial resources from local development institutions;
  13. Applications/patents with at least one infringed claim, i.e., where unauthorized reproduction and/or commercialization is taking place in Brazil;
  14. When a supposed infringer is accused by the applicant/patentee of reproducing and/or commercializing the subject matter thereof without authorization;
  15. When a prior user had already used, produced, sold and/or imported the object of protection before the corresponding patent application was filled, and is being or about to be jeopardized by the filing of such application; and
  16. Applications with BR priority.

Ordinance #55/2021: Phase III of the PPH program – PCT

Ordinance #55/2021, implementing Phase III of BRPTO's PPH program, came into to force on January 1, 2022. This new phase adds the possibility of 100 PPH requests based on the International Preliminary Report on Patentability (IPRP), clearly indicating that at least one of the claims is considered patentable, and increases the number of applications that will be accepted in the program to 800 applications per year. The number of applications per applicant remains one per week, and the number of applications per IPC Section remains 150 applications per section per year. This new Ordinance comes into force on January 1, 2022. It is available at the BRPTO’s website, and its original version (in Portuguese) can be downloaded here.

Ordinance #56/2021: New sequence listing standards and format

As of today, January 3, 2022, Sequence Listings must be submitted to the BRPTO following the World Intellectual Property Organization (WIPO) ST.25 Standard (.TXT format). According to Ordinance #56/2021, up to June 30, 2022, the Sequence Listing can be submitted to the BRPTO either following the afroementioned ST.25 Standard (.TXT format) or the new ST.26 Standard (.XML format). Ordinance #56/2021 is available at the BRPTO's website, and its original version (in Portuguese) can be downloaded here.

In case you wish further information on any of the mentioned Ordinances or their corresponding English version, please contact us at patents@lickslegal.com. We will be glad to assist you.