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The Brazilian Patent and Trademark Office (BRPTO) published on January 30, 2018 Resolution #209/2018, which establishes the administrative procedure of the Patent Prosecution Highway (PPH) Pilot Program, agreed between the BRPTO and the SIPO.

The request for participating in the Patent Prosecution Highway (PPH) Pilot Program shall be filed, by the Applicant(s) or duly authorized Attorney, from February 01, 2018 until January 31, 2020 (limited to the first 200 suitable applications, among which up to 20 may be of the Mottainai type, which depends on the examination order and not of the filing order).

For participating in the PPH Pilot Program BRPTO-SIPO the patent application of invention or utility model (industrial designs are excluded) must belong to a family of patents in which the first application (priority) was filed in the BRPTO or in the SIPO or, in the case of applications filed under the Patent Cooperation Treaty (PCT), the BRPTO or the SIPO must have been designated as the Receiving Office (RO).

Moreover, the corresponding Chinese application must have been considered patentable by the SIPO, i.e., a “decision to grant” must have been issued.

For being eligible for participating in the PPH Pilot Program BRPTO-SIPO, the application should be related to “information technology”, “packaging”, “measurement technology” or “chemistry”, with the exception of applications related to “drugs”, and classified with any one of the symbols of the International Patent Classification – IPC, included in the list of Annex I.

Apart from the above, according to the resolution, the application should meet the following requirements:

1. it should have been duly filed and the corresponding notification issued in the Brazilian Industrial Property Gazette;
2. it should have been published in the Brazilian Industrial Property Gazette or, in the case of PCT applications, it should have been published by the World Intellectual Property Organization
3. its examination should have been requested;
4. its examination may not be suspended for the fulfillment of a requirement previously issued by the BRPTO; and
5. all its annual fees until the request should have been paid.

Participation in the present program is forbidden for:

1. divisional applications, except those cases resulting from alleged lack of unity of invention in the corresponding allowed application;
2. patent applications that have been accepted in another fast track examination request;
3. patent applications in which technical examination has been initiated by the BRPTO; and
4. patent applications that are under litigation in Brazil

When filing the request for participating in the Patent Prosecution Highway (PPH) Pilot Program it should be presented, if necessary, new pages of the patent application corresponding to the subject matter allowed by the SIPO, table of correspondence between the claims allowed by the SIPO and those pending in the Brazilian patent application or, if the claims consist of a literal translation of the claims allowed by the SIPO, a simple declaration stating this condition.

The granting of the fast track examination of a Brazilian patent application based on the Patent Prosecution Highway (PPH) Pilot Program does not characterize the automatic grant of the patent, since the BRPTO will carry out its examination pursuant to the Brazilian legislation and the other procedures in force on the examination date, respecting the principle of independence of rights.

In the event you have a patent application that meets the provisions of this resolution and you are interested in participating in the program, please instruct us accordingly as soon as possible specifying the official number thereof, having in view that there is a limitation in the number of applications.

Please check the English version of Resolution #209/2018 here. If you have any questions, please contact us at brj@clarkemodet.com.br 

ANNEX I
TECHNICAL FIELDS ACCEPTED IN THE PPH BRPTO-SIPO

Patent applications with main classification in the following symbols of the International Patent Classification – IPC, including their respective lower hierarchical levels of classification, may participate in the Pilot Project BRPTO-SIPO. In any case, patent applications related to the technical field of “drugs”, understood as those applications with main or secondary classification with symbols A61K, are excluded.

I. Information Technology

II. Others