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Resolution # 154/2015 – Patent Prosecution Highway (PPH) Pilot Program

The Brazilian Patent and Trademark Office (BRPTO) published on January 05, 2016 Resolution # 154/2015, which establishes the administrative procedure of the Patent Prosecution Highway (PPH) Pilot Program, agreed between the BRPTO and the USPTO.

The request for participating in the Patent Prosecution Highway (PPH) Pilot Program shall be filed, by the Applicant (s) or duly authorized Attorney, until January 5, 2018 (limited to the first 150 (one hundred fifty) suitable applications).

According to the resolution, the patent applications should meet the following requirements:

I. it should have been filed in the BRPTO on or after January 1, 2013;

II. it should be related to patent of invention (utility models and industrial designs are excluded);

III. it should have been published or a request for early publication must have been filed or, in the case of PCT applications, it should have been accepted in the examination of eligibility for entry into the national phase;

IV. its examination should have been requested;

V. its examination may not be suspended for the fulfillment of a formal requirement;

VI. all its annual fees until the request should have been paid;

VII. it should not have been accepted in another fast track examination request;

VIII. it should not be part of a Court Action in Brazil;

IX. it should not be a divisional application, except those cases resulting from alleged lack of unity of invention in the corresponding application allowed;

X. its substantive examination should not have been initiated;

XI. it should be related to the oil, gas and petrochemical industry and classified with any one of the symbols of the International Patent Classification – IPC, included in the list of Annex I (proven is needed);

XII. it should belong to a family of patents in which the first application (priority) was filed in the BRPTO or in the USPTO; and

XIII. the corresponding US document should have been allowed by the USPTO (“notice of allowance”).

The request for participating of the Patent Prosecution Highway (PPH) Pilot Program may also be filed in the USPTO for patent application(s) belonging to the same family of a patent application already allowed by the BRPTO. In this case, there are no restrictions related to the technical field or to the filing date of the application.

When filing the request for participating of 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 USPTO, table of correspondence between the claims allowed by the USPTO and those pending in the Brazilian patent application or, if the claims consist of a literal translation of the claims allowed by the USPTO, 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 your patent application 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. The official fee for requesting the entry into this pilot program in the BRPTO is of BRL1775.00 (approx. USD450.00 / EUR420.00). There is no official fee to the entry into the PPH program in the USPTO.

An English version of Resolution # 154/2015 is attached for your prompt reference.

Carmen Sánchez-Puelles