Client Alert

Phase II of BRPTO’s PPH program is anticipated on January 1, 2021!
(per BRPTO’s gazette of December 29, 2020)

As indicated in our client alert from December 29, 2020, Phase I of the PPH program, originally scheduled to close on November 30, 2022, reached its limit in December 2020. We are glad to advise that the BRPTO has decided to anticipate Phase II of the PPH program, under Ordinance #404/2020, and make many changes to the program.

Among the main changes are:

i) the number of applications that will be accepted in the program has been increased from 400 to 600 applications per year;

ii) the number of applications per applicant has also been enlarged from one per month to one per week,

iii) the number of applications per IPC Section has been increased from 100 to 150 applications per section per year;

iv) the examination may have been performed by any participating Office, not only where the first application has been filed; and

v) no appeal is available against a decision denying an application entry into the program.

This Ordinance revokes Rule #252/2019 (client alert from December 2019) but reinforces the harmonization of all PPH agreements signed by the BRPTO so far.

This new Ordinance comes into force on January 1, 2021, and closes on December 24, 2024.

Ordinance #404/2020

Ordinance #404/2020 establishes that a Brazilian application must comply with the following requirements to be accepted into this PPH Pilot Program:

i) it must have been filed for at least 18 months or have a request for anticipated publication or, in case of international applications, have been published by the WIPO;

ii) it must have its request for examination filed at the BRPTO;

iii) it must not have been accepted in any fast-track examination program;

iv) it must not have its technical examination initiated by the BRPTO;

v) it must not have been voluntarily divided or amended by the applicant between the PPH request submission and the decision of the PPH procedure;

vi) it must belong to a patent family having the oldest patent application filed at the BRPTO or at any PPH participating Office, acting as a national or regional office, or in case of PCT applications, acting as a Receiving Office (RO);

vii) it must belong to a patent family having an application examined by the Earlier Examination Office, acting as a national office, and considered as comprising patentable subject matter after the technical, substantive or merit examination;

viii) it must belong to a patent family for which the Earlier Examination Office, acting as a national office, has issued an allowance or granting decision; and

ix) it must claim the same or a more restrictive subject matter when compared to the one considered patentable by the Earlier Examination Office for the application of the same patent family. The set of claims submitted with the PPH request cannot have additional subject matter when compared with the claim chart examined by the Earlier Examination Office, even if it has a more restrictive scope of protection when compared to the set of claims pending at the BRPTO.

Any or all the applicants may request an application participate in the PPH Pilot Program via a specific electronic form. Amongst other documents required by Ordinance #404/2020, the applicant must submit, together with the request: 1) documents proving that the application meets the requirements mentioned above; 2) a table including the correspondence between the BR application claims and claims considered as allowable by the Earlier Examination Office and 3) a copy of non-patent literature considered as prior art by the Earlier Examination Office.

The BRPTO will evaluate the applications according to the PPH request date. Applications that do not meet the requirements will either: a) be given the opportunity to correct the irregularity, in which case the BRPTO will issue an office action to be replied to within 60 days, or b) have its participation in the PPH Pilot Program denied.

The Ordinance establishes limitations to i) the number of applications that will be accepted in the program (600 applications per year – from the first day to the last day of the corresponding calendar year); ii) the number of applications per applicant (one per week – from Monday to Sunday); iii) the number of applications per IPC Section (150 applications per section per year – from the first day to the last day of the corresponding calendar year); iv) the examination could have been performed by any participating Office, not only where the first application has been filed; and v) no appeal is available against a decision denying an application entry into the program.

In case the applicant voluntarily amends or divides the application before the BRPTO issues the first substantive Office Action, the application will be withdrawn from the PPH program.

The BRPTO is still expanding its cooperation agreements and notifying the Brazilian patent system users via its website about the new participating Offices. Up to this date, the following Offices have been confirmed by the PPH program:

Ordinance #404/2020 is available at the BRPTO’s website, and its original version (in Portuguese) can be downloaded here. For its English version or more information on the matter, please contact us at patents@lickslegal.com. We will be glad to assist you.

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