December 2, 2019
Rule #252/2019 implementing the BRPTO’s new PPH Pilot program came into to force on December 1st, 2019. This new program unifies the PPH agreements signed by the BRPTO so far and adds the possibility of expediting the examination of patent applications belonging to any field of technology. The BRPTO is still signing 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 in this new PPH program:
According to Rule#252/2019, eligible applications must belong to a patent family comprising an application considered endowed with the patentability requirements by the Earlier Examination Office after the substantive examination.
The Rule establishes limitations to i) the number of applications which will be accepted in the program (400 applications per year); ii) the number of applications per applicant (one per month); and iii) the number of applications per IPC Section (100 applications per section per year).
Rule #252/2019 establishes that the Brazilian application must comply with the following requirements to be accepted in 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 submitted to the BRPTO;
iii) it must have not been accepted in any fast-track examination program;
iv) it must not have its technical examination initiated by the BRPTO;
v) it must have not 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 at least the oldest patent application filed in the BRPTO or in the Earlier Examination 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 claim chart 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.
The participation of an application in the PPH Pilot Program shall be requested by any or all the applicants via a specific electronic form. Amongst other documents requested by Rule #252/2019, 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 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 its request date, and applications that do not meet the requirements will either a) 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 b) have its participation in the PPH Pilot Program denied.
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.
This rule came into force on December 1, 2019 and will close on November 31, 2022. It revokes all PPH programs issued by the BRPTO before, i.e.: Rule 202/2017 (EPO-BRPTO PPH program); Rule #209/2018 CNIPA-BRPTO PPH program); Rule #218/2018 (Phase II of the USPTO-BRPTO PPH program); Rule #222/2018 (UKIPO-BRPTO PPH program); Rule #223/2018 (DKPTO-BRPTO PPH program); Rule #235/2019 (Phase II of the JPO-BRPTO PPH program); Rule #237/2019 (BR Priority program); and Rule #242/2019 (Phase III of the PROSUL PPH program).
The original Portuguese version of Rule #252/2019 is available here. Please contact us for the English version.