Phase II of USPTO-BPTO PPH: new requirements and extension of the covered technical field

The Brazilian PTO published on May, 9th Rule # 218/2018, which establishes the second phase of the Patent Prosecution Highway (PPH) between the Brazilian PTO and the USPTO. The period for receiving fast-track examination requests within this PPH is between May 10, 2018 and April 30, 2020. In this new phase, some modifications were performed in the requirements to participate in this program. The main aspects can be summarized as follows:

• Subject matter eligible to this PPH: patent applications related to information technology (IT) field or oil, gas and petrochemical field, according to the International Patent Classification (IPC) as follows:

I. Information technology (IT)

Electrical machinery and apparatus, energy

F21#, H01B, H01C, H01F, H01G, H01H, H01J, H01K, H01M, H01R, H01T, H02#, H05B, H05C, H05F, H99Z

Audiovisual technology

G09F, G09G, G11B, H04N3, H04N5, H04N9, H04N13, H04N15, H04N17, H04R, H04S, H05K

Telecommunications

G08C, H01P, H01Q, H04B, H04H, H04J, H04K, H04M, H04N1, H04N7, H04N11, H04Q

Digital communication

H04L

Basic Communication Processes

H03#

Computer technology

G06# (not including G06Q), G11C, G10L

Methods of information technology for management

G06Q

Semiconductors

H01L

Others

B60K, B60L, B60W, B62D, B62J, F02D, G02B, G02F, G03G, G08G, H01S, H04N19, H04N21, H04W, H05H

II. Oil, gas and petrochemical

Carrying out operations and transportation

B01#, B04#, B07#, B63#

Chemical

C02#, C07#, C08#, C09#, C10#

Fixed construction

E02#, E21#

Mechanical engineer

F04#, F15#, F16#, F17#

Measurement and testing

G01#

Others

C21#, C22#, C23#

• No restriction regarding the filing date of the application is made in this second phase, and each Applicant can request the participation of only one application per month in this PPH;
• Only applications belonging to patent families whose earliest application has been filed at USPTO or, in case of a PCT application, the USPTO was the receiving office, are accepted;
• The Brazilian PTO will technically examine up to 200 patent applications, in which 50 of these applications can use the PCT results to request the participation in this fast-track examination;
• The Brazilian patent application must have an application of its family allowed by the USPTO or at least one of the claims should be considered patentable in the ISR or IPER performed by the USPTO, acting as International Authority in the scope of PCT;
• The Brazilian patent application must have been published by the BRPTO and must have the regular examination already requested;
• The Brazilian patent application must have no outstanding office action to be complied with or the application must have not undergone a regular technical examination before;
• The Brazilian patent application must not be in court litigation;
• The patent application must not be a divisional application (except for those resulting from the division of the original application and from lack of unity of invention objection issued for equivalent application).