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Overview of Patent Prosecution Highway programs in Brazil
Since 2016, the Brazilian PTO (INPI) has been implementing several Patent Prosecution Highway (PPH) programs with different PTOs in order to accelerate examination of patent applications and try to reduce the large existing backlog.
Under the PPH program, participating patent offices agree that when an applicant receives a final decision from a first patent office concluding that at least one claim is allowed, the applicant may request expedited examination for the corresponding claim(s) in a corresponding patent application that is pending in a second patent office.
Below is an overview of the PPH programs currently running in the INPI:
- PPH INPI-USPTO: On January 11, 2016, a PPH pilot program started between the INPI and the United States Patent and Trademark Office (USPTO).
During Phase I of the pilot program, which ran until May 10, 2018, the INPI only accepted patent applications in the oil and gas industry.
On May 08, 2018, the INPI published Resolution No. 218/18, which established Phase II of the program. This new phase has been running since May 10, 2018 and will finish on April 30, 2020, or when 200 applications are accepted, whichever occurs first.
The main difference of Phase II is the expansion of the technological fields accepted in the program: patent applications related to information technology will be now accepted, as well as patent applications in the oil and gas industry.
- PPH INPI-JPO: On April 1, 2017, a two-year or 200 application PPH pilot program started between the INPI and the Japan Patent Office (JPO). The INPI only accepts PPH applications concerning the following technical fields: information technology and machinery, mainly for automobile-related technologies.
- PPH PROSUR: On October 1, 2016, a PPH pilot program started between the Argentinian, Brazilian, Chilean, Colombian, Paraguayan, Peruvian and Uruguayan PTOs, all members of the regional collaborative project on Industrial Property PROSUR. This program has no maximum number of requests and it is not limited to any technical field.
On July 7, 2017, Costa Rica became a PROSUR member (together with Panama and the Dominican Republic), and in September 2017, a PPH agreement signed between the Costa Rican PTO and its PROSUR counterparts entered into force.
The Memorandum of Understanding (MoU) signed between the PROSUR members to implement the PPH contained a declaration by the Brazilian PTO stating that the fulfillment of the program in Brazil would be subjected to the approval by the corresponding Ministry. On December 2016, Brazil received favorable authorization to implement the PPH program, which finally started on July 1, 2017.
The MoU also included a declaration by the Brazilian PTO stating that only patent applications with first filing in a PROSUR country member or patent applications filed in any PROSUR country member as PCT Receiving Office would be eligible in Brazil.
- PPH INPI-EPO: On December 1, 2017, a PPH pilot program started between the INPI and the European Patent Office (EPO). The pilot program will run for a period of two years, or until reaching 600 applications. The INPI only accepts PPH applications concerning the following technical fields: chemistry and medical technology, except drugs.
- PPH INPI-SIPO: On February 1, 2018, a PPH pilot program started between the INPI and the State Intellectual Property Office People’s Republic of China (SIPO). The pilot program will run for two years, or until reaching 200 applications. In theory, only 20 of these applications may be accelerated based on the first examination of the SIPO. The INPI only accepts PPH applications concerning the following technical fields: information technology, packages, measuring technology or chemistry, except drugs.
- PPH INPI-UKIPO: On August 1, 2018, a PPH pilot program started between the INPI and the United Kingdom Intellectual Property Office (UKIPO). The pilot program will initially run for two years, or until reaching 200 applications. Each office will accept only 100 requests to the PPH Program per year. In this PPH program, INPI only accepts PPH applications concerning the following technical fields: Biotechnology (except drugs), electric machines and devices, audiovisual technology, telecommunications, digital communication, basic communication processes, computer technology, IT management and semiconductors.
- PPH INPI-DKPTO: On April 18, 2018, the INPI and the Danish Patent and Trademark Office (DKPTO) signed a MoU to start a PPH Program on September 1, 2018. The pilot program will initially run for two years, or until reaching 200 applications. Each office will accept only 100 requests to the PPH Program per year. It is still under negotiation whether or not the program will be limited to patent applications in specific technological fields.
The INPI further intends to enter into new PPH agreements this year with Russia (ROSPATENT), South Korea (KIPO), Israel (ILPO) and Mexico (IMPI), as indicated in its 2018 action plan.
A Brazilian patent application has to comply with the following requirements to enter a PPH pilot program:
- It must have been filed first with the INPI or the other participating office.
- It must have been published or a request for early publication must have been filed (in the case of PCT applications, the entry into national phase must have been published).
- The substantive examination must have been requested.
- The substantive examination cannot have started.
- The examination proceedings must not be suspended in order to comply with a requirement by the INPI.
- All annuity fee payments must be up to date.
- Another request for fast-track examination must have not been granted and published.
- It must not be a divisional application, with the exception of those divisional applications resulting from the direct division of the original filing and derived from a lack of unity objection raised by the Office of First Examination.
- It must not be subjected to a lawsuit.
According to information published by the INPI, the average time to assess the eligibility of requests to participate in the program is 70 days, the average time from the PPH request until the first examination is issued is 160 days, and until a decision is made, 220 days.
Seventy-two requests were filed to participate in the Phase I of the PPH program with the USPTO, from which 45 already have been granted a patent. Up until August 7, 2018, 70 requests were filed to participate in the PPH program with the JPO, from which 26 already have been granted a patent.
Regarding the PPH INPI-EPO, only two patents have already been granted from the 25 requests filed to enter the program up until August 7, 2018.
The PPH INPI-SIPO program has received the most requests: 146 up until August 7, 2018, from which 10 patents already have been granted. In contrast, the PPH between the INPI and PROSUR has only received 3 requests, and no patent has been granted yet.
Despite a positive impact, the current PPH programs in Brazil have some limitations. In all programs, it is required that the patent application has been firstly filed either with the INPI or with the corresponding participating office. Additionally, except in the PPH INPI-PROSUR, only a limited number of requests are being accepted in each program and only for patent applications related to specific technical fields.
Remarkably, pharmaceutical patent applications, for which the average decision time at the INPI is currently 13 years, are excluded from eligibility in all PPH programs except in the INPI-PROSUR.