Phase II of Patent Prosecution highway 9 (PPH) will be implemented with some modifications

The Brazilian PTO published today Phase II (Ordinance No. 404/2020) of Patent Prosecution Highway (PPH) program, implementing new rules for the acceptance into the program, which will begin on January 01, 2021.

The PPH program is a bilateral co-operation agreement between the Brazilian PTO and other Patent Offices in the world (such as, USPTO, EPO, JPO, etc.) which might expedite the examination of Brazilian patent applications.

Phase II of PPH program brings important changes regarding the requirements for accepting patent applications into this program when comparing the former rule (Phase I). The main changes are summarized below:

New conditions Comments
600 PPH requests per year  

According to the former rule, the Brazilian PTO could receive 400 PPH requests per year. Phase II of PPH program establishes the new threshold value of 600 PPH requests per year.


1 PPH request per week by each Applicant
 

Before this new Ordinance, each Applicant could submit one single request per month. Phase II of PPH program establishes that from January 01, 2020 each Applicant may file one request per week.


150
PPH requests per IPC section per year
 

The requests for PPH program, per year, were limited to up to 100 requests. Now, this maximum number is of 150 PPH requests per IPC section per year.

Granted patent  

Previously, the patent applications eligible should correspond to a granted patent that have been firstly filed with the Brazilian PTO or the respective foreign PTO. According to new phase, it will be accepted a patent granted by any PTO partner.

Appeal  

Before this new Ordinance, it was possible to submit an appeal on specific cases. However, on Phase II, it is no longer possible to submit an appeal in case of PPH request is denied and, therefore, the only further attempt for this expedite examination would be submitting a new request.

 

It is important to highlight that the requirements related to scope of protection of the patent applications remain the same, that is, the subject matter claimed into the PPH request should be equal to or more restricted than that allowed/granted by the respective foreign PTO, being prohibited the inclusion of a subject matter for which the foreign PTO does not made search and/or technical examination, even if it represents a restriction of the subject matter claimed.

During the current year, the maximum amount of 400 requirements were reached and the average time for having a patent granted within the PPH program is of 5 months.

Should you have any questions, please feel free to contact us.

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