New era of PPH procedures in Brazil

12 December 2019

From December 1, 2019, there will be one single resolution that will discipline all PPH agreements in Brazil.

12 December 2019

On November 30, 2019, the PPH pilot projects has ended its cycle in Brazilian INPI, and from December 1, 2019, a new pilot project has begun with standardized requirements. There will be one single resolution that will discipline all PPH agreements (Resolution 252/2019).

Thus, November 2019 has been the last month of the PPH INPI-EPO, PPH INPI-SIPO, PPH INPI-USPTO II, PPH INPI-JPO and PPH PROSUL III among many others pilot projects. This information is valid for the purposes of limiting requirements. Until November 2019, there is no limitation on the number of applications that can be made by each applicant.

The new resolution (Resolution 252/2019) does not address the technical fields of patent applications for which applications for participation in PPH programs will be made. That is, there is no limitation regarding the technical fields. Patent applications classified under any International Patent Classification (IPC) will be accepted – more information may be provided as soon as the BRPTO consolidates the procedures.

Rule #252/2019 establishes that the Brazilian application must comply with the following requirements to be accepted in this PPH Pilot Program:

  1. It must have been filed for at least 18 months or have a request for anticipated publication or, in case of international applications, have been published by the WIPO;
  2. It must have its request for examination submitted before the BRPTO;
  3. It must have not been accepted in any fast-track examination program (Green patent, elder applicants..);
  4. It must not have its technical examination initiated by the BRPTO (even though the examination has not been issued,
  5. it may have started the examination process);
  6. It must have not been voluntarily divided or amended by the applicant between the PPH request submission and the decision of the PPH procedure;
  7. It must belong to a patent family having at least the oldest patent application filed in the BRPTO or in the Earlier Examination Office, acting as a national or regional office, or in case of PCT applications, acting as a Receiving Office (RO);
  8. It must belong to a patent family having an application examined by the Earlier Examination Office, acting as a national office, and considered as comprising patentable subject matter after the technical, substantive or merit examination;
  9. It must belong to a patent family for which the Earlier Examination Office, acting as a national office, has issued an allowance or granting decision; and
    it must claim the same or a more restrictive subject matter when compared to the one considered patentable by the Earlier Examination Office for the application of the same patent family. The claim chart submitted with the PPH request cannot have additional subject matter when compared with the claim chart examined by the Earlier Examination Office, even if it has a more restrictive scope of protection.

It is a good opportunity for the applicant for speeding up procedures sometimes complex Brazilian patent constellation.

For further information, please contact latinamerica@herrero.es

Isabel Rebolledo

Responsable del area de LPS. Departamento Patentes

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