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PPH – The BRPTO published on December 27, 2022 a new ordinance

The BRPTO published on December 27, 2022, a new ordinance, No. 78, which establishes the fourth phase of the PPH program. The ordinance will be in force starting on January 01, 2023, and will be valid until December 31, 2025.

Some differences from the previous phase include:

• In the case of division of the application before the PPH request, both the original application and its divisional application (s) must comply with the following: must have been published; the regular technical examination fee must be paid; no voluntary filing of divisional applications nor claim amendments should be made in the period between the request for admission in the PPH program and the decision to accept the admission in such program;
• the program will allow up to 250 requests per annual cycle related to the same Section of the International Patent Classification (IPC).

In addition, please note that BRPTO has signed PPH agreements with the following jurisdictions: United States, Europe, Japan, China, Austria, Sweden, United Kingdom, Denmark, South Korea, Singapore, Portugal, Spain, France, and more recently Chile, Colombia, El Salvador, Ecuador, Paraguay, Peru, Dominican Republic, and Uruguay.

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

1) Each applicant can submit one PPH request per application every weekly cycle (from Monday to Sunday);

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

3) It is necessary to pay the fee related to the regular technical examination;

4) The claimed matter must bear an equal or more restricted scope than the one considered as patentable by a foreign PTO, with a signed PPH agreement with Brazil, for the same patent family, being forbidden to include subject matter for which the foreign PTO has not carried out a search and/or technical examination, even if it is to restrict the claim´s object;

5) in case the PPH request is not admitted in the program, the decision cannot be appealed. Anyway, the applicant may file a new PPH request;

6) The voluntary filing of divisional applications or claim amendments to the patent application in the period between the request for admission in the PPH program and the decision to accept the admission will cause the PPH request to be denied;

One must have in mind that patent applications for which technical examination has already started (office action published) are not eligible to participate in the PPH program. In this case, there are other possible ways of expediting the examination in Brazil and we could assist you in this regard, please let us know.

In addition, admission to the PPH program does not characterize the automatic grant of the patent, since the BRPTO will carry out its examination process in accordance with Brazilian legislation.

Such PPH’s fourth phase has a cap of 800 requests, therefore we believe that based on the results of the previous phase such a limit will be reached by November 2023.

For any further clarification, please feel free to contact us at brj@clarkemodet.com.br.

Carolina Alves