On December 27, 2022, the Brazilian Patent and Trademark Office (BRPTO) published Ordinance No. 78/2022, which establishes phase IV of the Patent Prosecution Highway (PPH) Pilot-project.

Phase IV of the PPH started on January 1^st, 2023, and will end on December 31^st, 2025.

One of the main differences from Phase III of the Pilot-project is the possibility of using the results from examinations carried out by a Patent Office with which the BRPTO has a PPH agreement, in which the presence of patentable subject matter has been identified, inclusive a first Technical Examination Report.

Further, the possibility of requesting the entrance into the program based on positive results of the international phase of the PCT application, supported by the International Preliminary Report on Patentability (IPRP) issued by one of the Patent Offices with which the BRPTO has a cooperation agreement, acting as the Receiving Office (RO), will also remain available in this Phase IV.

For the sake of information, for applying to the PPH program, the main requirements the application must fulfill are the following:

• • The application must have had been published (international publication of a PCT application by the WIPO being accepted for this purpose);

• • The application shall not have had been admitted in any other fast-track examination program available;

• • No divisional application may be filed between the request and the decision of acceptance for entry into the program;

• • No amendments  may be submitted between the request and the decision of acceptance for entry into the program;

• • The Examination of the BR application shall have not started;

• • The BR application must belong to a patent family from which at least the oldest application has been filed at the BRPTO or at a Patent Office with which the BRPTO has a PPH agreement, or wherein at least one of these offices has been selected as receiving office under the PCT;

• • The BR application must belong to a patent family for which a Patent Office that has a PPH agreement with the BRPTO has indicated the presence of patentable subject matter in an application pertaining to the same family;

• • The BR application must claim subject matter identical or more limited compared to that considered patentable by the foreign Patent Office that has a PPH agreement with the BRPTO, not being allowed the inclusion of subject matter that for which the foreign PTO has not performed a search and/or examination on the merits, even if the subject matter is more limited.

Also, Phase IV of the Pilot-project will admit up to 800 applications per year (regardless of having been admitted or not), respecting the following limits:

• • Up to 1 PPH request per Applicant per week;
• • Up to 100 requests using the results from the IPRP; and
• • Up to 250 requests per International Patent Classification (IPC) Section per year.

Click here to read the complete Ordinance (in Portuguese).

 

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