The PPH is a bilateral or multilateral technical agreement whose scope is to share information and search reports for prior filings among signatory countries.12 The intention is to avoid a patent office having to repeat exactly the same work that has been done previously by some other patent office. This means that a search report drawn up by the patent office and a signatory country may be used by the patent office of another signatory country, thus avoiding repeating search efforts and fast-tracking decisions on awarding patents of invention.
The PPH does not imply that national patent offices are bound in any way to the conclusions reached in the technical examinations undertaken by foreign patent offices. They are completely independent, for this purpose. Based on a prior filings search report and information shared by a foreign patent office, a local patent office may reach a different conclusion on the patentability of the invention and consequently whether or not to award the patent of invention.
Over the years, many countries have realized that patent application examination capacities are failing to keep pace with the upsurge in new filings. Not even infrastructure upgrades or hiring more examiners with sufficient expertise would be sufficient to avoid a general backlog and sluggish progress for patent applications. Today, the US Patents and Trademarks Office (USPTO) takes some three years to complete a patent application examination,13 which is rated as a considerable delay by industry in the USA.14
Consequently, the USA and Japan set up a PPH pilot program in 2006,15 in order to avoid redundant searches for prior filings of applications filed in other countries, making good use of the examinations of these applications in an independent but harmonized manner.
Some ten years after the implementation of the first USA-Japan PPH, this system was expanded and adopted by several other countries. Today, there are 41 countries engaged in some type of PPH agreement.16
As mentioned, in November 2015, Brazil announced the adoption – through a Memorandum of Understanding (MOU) – of a pilot PPH program which was launched in January 2016 throughRule #154/2015.17 Although this is a significant step towards mitigating the effects of the backlog, the PPH adopted in Brazil was limited to the oil and gas sector, while also stipulating that the BRPTO will examine no more than 150 patent applications under this Rule, with these constraints curtailing the scope of the PPH, while also undermining the feasibility of attaining its goals.
The purpose of the PPH is to fast-track patent application procedures, with fewer delays and more effective spending by patent offices. The existence of trustworthy prior searches lessens the time required for technical examinations, thus boosting productivity, which has already been identified as one of the main problems faced by the BRPTO.
For the agreement with the USA, limiting the Brazilian PPH to only the oil and gas field of technology does not in fact benefit industry and the economy as a whole, and does not contribute to upgrading the innovation context in Brazil and attracting foreign investments.
Thus, expanding the scope of the PPH to encompass other fields of technology, as well as signing PPH agreements with other countries are crucial steps for pruning the BRPTO backlog and attracting investments in production to Brazil, on the technological cutting edge.
The PPH also has positive impacts for Brazilian inventors: lower patent processing costs ushered in by the PPH through cooperation results in financial savings for Brazilian applicants wishing to use the PPH in another country.18
Through the PPH, as soon as a decision is handed down on an application in a signatory country, its registrant presents the search results in the other country, together with all the comments made by the foreign examiner during the technical examination of the application, thus streamlining the work of local examiners without adversely affecting their autonomy and curtailing their technical independence.
It is noted that the BRPTO has been trying for the past few years to introduce steps that would speed up the processing of patent applications in Brazil and lessen its backlog. This has been handled through specific Rules19 that allow fast-track examinations of: (i) pharmaceutical products, processes, equipment and materials related to public health (Rule PR #80/2013);20 (ii) technologies addressing the environment known as green patents (Rule PR #131/2014 and PR #145/2015);21 (iii) patents filed by elderly applicants more than sixty years old or when the subject of the patent application is being reproduced by third parties without authorization (Rule #151/2015);22 (iv) patent applications filed initially with the BRPTO and then with other patent offices (Rule BRPTO PR #153/2015);23 (v) patent applications filed by micro-enterprises or small businesses (Rule BRPTO PR #160/2016)24.
Although these steps contributed to Brazil’s patent system to some extent, alone they are unable to solve the major problem of sluggish throughflows at the BRPTO, which is why the PPH seems to be the best option, due to its advantages and cost x benefit ratio.