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Brazil | Second Phase of the Patent Prosecution Highway program

After reaching the limit of 400 requests per year on December 21st, 2020, the BRPTO published on December 29, 2020 a new ordinance, Nº 404, which refers to the second phase of its PPH program.

The ordinance Nº 404 is in force since January 01, 2021 and will be valid until December 31, 2024. Some differences from previous phase include:

1. an applicant can submit one PPH request every weekly cycle (instead of the previous monthly cycle);
2. the program will allow a total of up to 600 requests per annual cycle;
3. the program will allow up to 150 requests per annual cycle related to a same Section of the International Patent Classification (IPC);
4. in case the PPH request is not admitted in the program, the decision cannot be appealed.

It is important to remember that Brazil has signed PPH agreements with the following jurisdictions: United States, Europe, Japan, China, Austria, Sweden, United Kingdom, Denmark, South Korea, Singapore and PROSUR (Argentina, Chile, Colombia, Costa Rica, Dominican Republic, El Salvador, Ecuador, Nicaragua, Panama, Paraguay, Peru, Uruguay).

The additional rules for an application to qualify for the PPH in Brazil remain the same, i.e.:

1) The Brazilian application must have been already published or have the request for anticipated publication duly filed.

2) It is necessary to pay the fee related to the regular technical examination.

3) The claimed matter must bear an equal or more restricted scope than the one considered as patentable by a foreign PTO, with signed PPH agreement with Brazil, for the same patent family.

4) The voluntary filing of divisional applications or claim amendments to the patent application in the period between the admission in the PPH program and the publication of the first Written Opinion will cause the PPH request to be canceled.

One must have in mind that patent applications for which technical examination has already started will not be admitted in the program. In addition, the admission in the PPH program does not characterize the automatic grant of the patent, since the BRPTO will carry out its examination processes in accordance to the Brazilian legislation.

For more information, please contact us at brj@clarkemodet.com.br

Silvia Costa