BPTO publishes phase IV of the Patent Prosecution Highway (PPH) Program
By Rosario Mauro.
The Brazilian Patent and Trademark Office (BPTO) recently published Ordinance no. 78, which implements phase IV of the Patent Prosecution Highway (PPH) pilot project and Ordinance no. 79 which rules all the other ways of expediting prosecution in Brazil.
The PPH program is effective as of January 1st , 2023 and will end on December 3, 2023 or until a total of 800 requests have been filed.
In order for an application to be eligible to the PPH program, the following basic requirements must be met:
– There must have been a decision to grant, issued by a foreign authority associated with the BPTO in connection with the same family of patent (currently the following authorities have agreements in force: Austria, China, Denmark, Europe, France, Japan, Portugal, Spain, Singapore, South Korea, Sweden, United Kingdom, and United States); or a favorable International Preliminary Report on Patentability (IPRP) issued in connection with a correspondent PCT application;
– The Brazilian application’s claimed subject matter must be identical or more restricted than the subject matter allowed by the foreign authority;
– The Brazilian application must have been published and a request for examination must have been filed – if the application has not yet accomplished these requirements, simultaneously to the filing of the PPH request it is possible to file a request for early publication and examination;
It is important to emphasize that last year the BPTO reached the limit of requests very quickly, especially after the IP Law was amended to exclude the 10-year after grant patent term disposition. Therefore, and considering the current backlog, it is advisable to file the request as soon as possible.
Another limitation is that only one request per applicant may be filed per week
On the other hand, Ordinance 79/2022 updated and unified the Fast Track program including Green Technologies; Applications covering a technology available in the Brazilian market; Applications involved in a possible infringement; Applications covering products and therapies for cancer, AIDS; etc.
In Argentina we have a similar mechanism currently in force to expedite examination. By means of Resolution INPI No. 56/2016, when a patent for the same invention has been granted after substantive examination by a foreign patent office with similar patentability standards to those applied by the Argentinian Patent Office and the claims of the corresponding Argentine application are amended to be coextensive in scope with those of the foreign patent, the Argentine application could be granted without further examination provided its claims comply with the local formal and patentability requirements. The applicant can voluntarily request the application of said resolution, in that case, the Argentinian Patent Office should issue a resolution within 60 days from the filing of the request.
Unlike Brazil, in Argentina there is no limit on annual requests, it is only necessary that the examination process has not begun and that the substantive examination fees have been paid.
PPH programs proved to be very effective to combat the huge Backlog of Patent Offices and help applicants in their effort to obtain patent rights with more legal certainty and more efficiently by optimizing the examination of the main patent offices in the world.
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