New PPH program between the BRPTO and the SIPO under Rule #209/2018

November 8, 2017

New PPH program between the BRPTO and the SIPO under Rule #209/2018

(BRPTO’s gazette of January 30th, 2018)

The BRPTO published on January 30th, 2018, Rule #209/2018 implementing the PPH Pilot program with the SIPO, which might speed up the examination of pending Brazilian applications with an application from the same family for which a decision to grant has been issued by the SIPO.

The Program will accept applications belonging to patent families whose earliest application has been filed at the BRPTO or the SIPO or, in case of a PCT application, with no priority claim, the BRPTO or the SIPO was the receiving office.

To be eligible for this PPH program, the application must be related to chemical, measurement,
packaging and IT fields, with the exception of drug-related applications which are not encompassed by this program. The application must also be specifically classified under the IPC codes listed in the table below to be accepted. Applications classified under any of the groups of A61K subclass, even if A61K is a secondary classification, are also excluded from the program.

The table below summarizes the International Patent Classifications accepted by this program:

To be accepted in the BRPTO-SIPO PPH Pilot Program, the Brazilian application must:

i) have the filing or Brazilian national phase entry notification duly published in the BRPTO’s Official gazette under code 2.1 or code 1.3;
ii) have already been published by the BRPTO under code 3.1 or code 3.2 or have the corresponding international application published by WIPO;
iii) have its request for examination submitted to the BRPTO;
iv) have all due annuity fees paid;
v) not have office actions pending on replies;
vi) have not been accepted in any fast-track examination program;
vii) not be involved in a lawsuit in Brazil;
viii) not be already under substantive examination; and
ix) not be divided, except when the division occurs from the original application and due to the allegation of lack of unity of invention by the SIPO.

The participation of the application in the BRPTO-SIPO PPH Pilot Program shall be requested by any or all the applicants via a specific electronic form. Amongst other documents requested by Rule #209/2018, 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 SIPO and (3) a copy of non-patent literature considered as prior art by the SIPO.

The BRPTO will evaluate the applications according to its request date, and 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 can file an appeal against the denial decision within 60 days from its notification.

The BRPTO-SIPO PPH Pilot Program starts on February 1st, 2018 and will be valid until January 31st, 2020.
The project is limited to 200 participation requests, wherein 20 can be Mottainai requests.

The original Portuguese version of Rule #209/2018 is available here.
The English version will be available soon.