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The Brazilian PTO (BRPTO) published today Rule # 154/2015 implementing the Patent Prosecution Highway (PPH) Pilot Program limited to the first 150 applications

January 5, 2016

The BRPTO published today, January 5, 2016, the much awaited rule implementing the PPH Pilot Program, which might speed up the examination of Brazilian applications duly filed and regularly pending in Brazil after a corresponding application from the same family receives the notice of allowance from the USPTO.

The USPTO – BRPTO PPH Pilot Program starts on January 11, 2016. Unfortunately, the BRPTO limited the use of the Pilot Program to applications claiming a US or Brazilian priority, filed in Brazil after January 2013, and claiming certain inventions in the oil and gas field of technology, including extraction, refining, transportation and other activities (IPC B01, B63, C09K8, C10, E02, E21, F15, F16, F17, G01). The USPTO does not make similar restrictions.

The restrictions imposed by Rule # 154/2015 might not stand challenges before courts for violating international treaties obligations and Brazilian federal statutes.

The applicant must present the USPTO notice of allowance in order to participate in the Pilot Program. Amongst other documents requested by Rule # 154/2015, the applicant needs to file a request using the service code 277 and pay the corresponding fee of R$710 (approximately USD180).

Only utility patents, including PCT applications, are eligible for the Pilot Program at the BRPTO, which will also consider provisional applications, continuations-in-part and bypass applications as the basis for a request for participating in the Program. The BRPTO will accept a divisional application if filed to comply with an office action from the USPTO due to lack of unity of invention.

Design applications, plant patent applications, reexamination applications and reissues may not be used as a basis for a request. In addition, reports on results of the international phase of the PCT and applications subject to confidentiality due to national security are excluded. The results of the PCT international search report may not be used to request participation in the Pilot Program. Likewise, a USPTO “Non-Final Rejection” indicating the allowable claims is also insufficient for requesting participation in the Pilot Program.

It is early to determine how much the Pilot Program will indeed benefit applicants suffering from the 13-year average backlog at the BRPTO. Similar fast-track initiatives for expediting examination of applications relating to green technologies, cancer and HIV, as well as applications with at least one infringed claim, reach a final decision in about eleven months.

The original Rule # 154/2015 in Portuguese can be downloaded here. English version by Licks Attorneys can be downloaded here.