BRPTO launches Phase III of Patent Prosecution Highway (PPH) Pilot Program

Recently, the Brazilian PTO (BRPTO) published, in its Official Gazette No. 2659, Rule #055/2021 that implements Phase III of the PPH Pilot Program, which will run from January 1^st, 2022 to December 31, 2024.

The main differences between the recently announced Phase III of the PPH program and the previous rule (Phase II) are

• PCT-based participation requests are now accepted: A positive IPRP result (issued by a participating PTO) will be accepted as basis for the participation of a patent application into the PPH program. Up to 100 PCT-based participation requests will be received per annual cycle.
• Phase III of the PPH program establishes a new threshold of 800 PPH requests per annual cycle. According to the previous rule, the BRPTO could receive only 600 PPH requests per year.

Additionally, the following limitations are also established under Phase III of the PPH Pilot Program:

• Limit of one PPH request per week by each Applicant.
• Limit of 150 PPH requests per IPC section per year.
• To be eligible to the Phase III of PPH program, the first filed application of the patent family must be filed in any of the PPH participating PTOs*, and the allowance/granting decision of any of the PPH participating PTOs can be used for filing the PPH request.
• Once accepted into the PPH program, in the event that voluntary amendments or divisional applications are filed before the publication of the first office action, the fast-track procedure will be cancelled.
• In case a divisional application is filed after the publication of the first technical examination report, only the parent application will keep its examination under the PPH route.
• It is not possible to appeal against a decision refusing the participation of an application to the program.

* The current PPH participating PTOs are:

Should you need further clarification, we will be glad to assist you.