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The BRPTO extends the PPH pilot program with the USPTO under Rule #210/2018

February 1, 2018

(BRPTO’s gazette of January 30th, 2018)

The BRPTO published on January 30th, 2018, Rule #210/2018 establishing a new deadline for the PPH pilot program between the BRPTO and the USPTO. The PPH pilot program will be valid until May 10th, 2018.

As mentioned in our client alert of January 5th, 2016 (available here), the PPH Program accepts applications belonging to patent families whose earliest application has been filed at the BRPTO or the USPTO or, in case of a PCT application, with no priority claim, the BRPTO or the USPTO was the receiving office.

Only applications (1) filed at the BRPTO after January 2013, (2) related to oil and gas fields and (3) with an application of its patent family which had the notice of allowance issued by the USPTO, are eligible for this PPH program. The application must also be specifically classified under the International Patent Classification codes listed in the table below:

TECHNICAL AREA IPC CODE
Physical or chemical processes or apparatus in general B01
Ships or other waterborne vessels; related equipment B63
Compositions for drilling of boreholes or wells; Compositions for
treating boreholes or wells, e.g. for completion or for remedial operations
C09K8
Petroleum, gas or coke industries; technical gases
containing carbon monoxide; fuels; lubricants; peat
C10
Hydraulic engineering; foundations; soil-shifting E02
Earth or rock drilling; mining E21
Fluid-pressure actuators; hydraulics or pneumatics in general F15
Engineering elements or units; general measures for producing
and maintaining effective functioning of machines or installations;
F16
Storing or distributing gases or liquids F17
Measuring; Testing G01

To be accepted in the BRPTO-USPTO PPH Pilot Program, the Brazilian application must: i) have been filed at the BRPTO after January 2013;
ii) be a utility patent application. Utility model patent applications are not eligible; iii) have already been published by the BRPTO;
iv) have its request for examination submitted to the BRPTO;
v) have all due annuity fees paid;
vi) not have office actions pending on replies;
vii) have not been accepted in any fast-track examination program; viii) not be involved in a lawsuit in Brazil;
ix) not be already under substantive examination;
x) not be divided, except when the division occurs from the original application and due to the allegation of lack of unity of invention by the USPTO; and
xi) “Plant patent applications”, “reexamination applications”, “reissue applications” and “industrial design applications” cannot be used as the basis for the PPH request.

The participation of the application in the BRPTO-USPTO PPH Pilot Program shall be requested by all applicants via a specific electronic form. Amongst other documents requested by Rule #154/2015, the applicant must submit, together with the request (1) documents proving that the application meets the above-mentioned requirements; (2) a table including the correspondences between the BR application claims and claims allowed by USPTO and (3) a copy of non-patent literature considered as prior art by the USPTO.

The BRPTO will evaluate the applications according to its request date, and applications that do not meet the requirements will either (1) be given the opportunity to correct any irregularity, case in which the BRPTO will issue an office action to be replied to within 60 days, or (2) have its participation in the PPH Pilot Program denied. The applicant can file an appeal against the denial decision within 60 days from its notification.

The BRPTO-USPTO PPH Pilot Program will close on May 10th, 2018. The project is limited to 150 applications, as originally established.

The original Portuguese version of Rule #210/2018 is available here. The English version will be available soon.

The English version of Rule #154/2015 is available here.