On December 21, 2021, the Brazilian Patent and Trademark Office (BRPTO) published Ordinance No. 55/2021, which establishes phase III of the Patent Prosecution Highway (PPH) Pilot-project.

Phase III of the PPH started on January 1st, 2022, and will be available until December 31, 2024.

One of the main differences from Phase II of the Pilot-project is the increase in the limit of requests per year, which went from 600 to 800. Also, the positive results of the PCT, issued on the International Preliminary Report on Patentability (IPRP), are now considered as one of the bases to request participation in the Pilot-project. In this case, up to 100 requests per year will be allowed.

For applying to the PPH program, the main requirements the application must fulfill are the following:

• • The Examination of the BR application shall have not started;
• • The BR application must belong to a patent family from whiche 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 from which a Patent Office that has a PPH agreement with the BPTO has issued: (i) a granting or allowance decision; or (ii) an International Preliminary Report on Patentability (IPRP) clearly indicating patentable subject matter in the application;
• • The BR application must belong to a patent family from which the patent office that has a PPH agreement with the BRPTO has performed a technical examination on the merits and indicated patentable subject matter in the application;
• • The application must claim subject matter identical or more limited compared to that considered patentable by the foreign Patent Office, not being allowed the inclusion of subject matter that the foreign PTO has not performed a search and/or examination on the merits.

Also, Phase III of the Pilot-project will admit up to 800 applications per year, respecting the following limits:

• • Up to 1 PPH request per Applicant per week;
• • Up to 150 requests per International Patent Classification (IPC) Section per year;
• • Up to 100 requests using the results from the IPRP.

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

 

 

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