Another major step forward in Brazil: Patent Prosecution Highway became tech-neutral, covering all areas of technology

We are writing to report good news: in addition to recent measures implemented by the Brazilian PTO towards fixing the patent backlog in the course of the next 18 months, the Brazilian PTO decided to make all Patent Prosecution Highway Programs tech-neutral as of December 1, 2019 (Rule 252/2019). Basically, the PPH Programs are no longer limited to certain areas of technology, so applicants are now able to both expedite examination and increase chances of allowance no matter the application’s area of technology.

For your reference, please find below a list of the patent offices that have signed a PPH agreement with the Brazilian PTO:

  • USPTO – United States Patent and Trademark Office;
  • EPO – European Patent Office;
  • JPO – Japanese Patent Office;
  • SIPO – Chinese Patent Office (awaiting final signature);
  • UKIPO – United Kingdom Intellectual Property Office;
  • DKPTO – Denmark Patent and Trademark Office; and
  • PROSUL – Patent Offices from Argentina, Chile, Colombia, Costa Rica, Equator, Paraguay, Peru and Uruguay.

Applicants need to make sure that the following requirements are met for an application to benefit from these PPH Programs:

a) Published application (including the international publication of a PCT application);
b) Examination requested;
c) No request for participating in a different fast-track program;
d) No office action on the merits issued;
e) Earliest priority filed before one of the foreign patent offices listed above;
f) Notice of allowance or grant decision from one of these patent offices; and
g) Claims are the same or more limited than the ones allowed/granted abroad.

Each applicant can only request the Brazilian PTO to include one application per month into the PPH Programs. In total, the Brazilian PTO will accept just 400 PPH requests per year, and not more than 100 in the same International Patent Classification per year. The Brazilian PTO will publish a monthly report with updated information regarding the PPH requests. The new rules making the PPH Programs tech-neutral will be in force until November 30, 2022 or until the numbers above are met.

Considering the limitations in the total number of PPH requests that will be accepted by the Brazilian PTO each year, and that can be filed by each applicant per month, we strongly recommend our clients and colleagues to act fast to benefit the most from the new rules.

Please feel free to contact us in case you need any clarification or additional information.

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