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Brazil: Unified Patent Prosecution Highway programme

After the publication of Resolution 239, last June 17, which consolidated all the available fast-track routes in Brazil but excluding the PPH modalities, the Brazilian PTO (BRPTO), by Resolution 252, proceeded with the consolidation of the rules for applying to all PPH routes previously available in Brazil.

It is important to recall that Brazil has signed PPH agreements with the following jurisdictions: United States, Europe, Japan, China, United Kingdom, Denmark and PROSUR (Argentina, Chile, Colombia, Costa Rica, Ecuador, Paraguay, Peru, Uruguay).

The PPH consolidated Resolution 252 just entered into force on last December 1st and it will be valid by November 30, 2022. One of the main differences given by this new resolution, is the lack of limitation in what concerns the technological fields of inventions to be eligible for PPH. That is, Brazilian applications covering inventions belonging to all technological areas can be eligible for the PPH provided that the first application of the family has been allowed in one of the PPH agreed jurisdictions.

On the other hand, important limiting rules can also be observed in this new resolution wherein it is only accepted a single PPH request per applicant within each monthly cycle and the total number of PPH requests per year may not exceed the 400 requests.

The additional rules for an application to qualify for the PPH in Brazil, are:

• 1) The application must have been already published or have the request for anticipated publication duly filed.
• 2) It is necessary to collect the fee related to the regular technical examination.
• 3) The claimed matter must bear an equal to or more restricted scope than the one considered as patentable by the foreign PTO for the same family first patent application, even considering differences due to translations.

One must have in mind that if the technical examination of the patent application already begun, it will not be possible to qualify for the PPH in Brazil. In addition, the granting of the priority examination of a Brazilian patent application based on the PPH program does not characterize the automatic grant of the patent, since the BRPTO will carry out its examination pursuant to the Brazilian legislation.
For more information, please contact us at brj@clarkemodet.com.br (brj@clarkemodet.com.br).