(BRPTO’s Gazette from February 12th, 2019)

The BRPTO published on February 12th, 2019, Rule #235/2019 implementing Phase II of the PPH Pilot program with the JPO. As mentioned in our client alert from January 24th, 2019, the most relevant modification in the new phase is the expansion of technologies eligible for the PPH, now, in addition to IT arts, the program embraces applications claiming materials and metallurgy, agrochemicals, microorganisms, enzymes, macromolecular chemistry and polymers arts. The table below summarizes the IPCs accepted by this new phase. Applications classified under any of the groups of A61K subclass are excluded from the program.

International Patent Classifications accepted by this PPH program

To be accepted in Phase II of BRPTO-JPO PPH Pilot Program, the Brazilian application must:

• have already been published by the BRPTO, or have its early publication requested, or, for international applications, have been published by WIPO;
• have its request for examination submitted to the BRPTO;
• not have its substantive examination already started; and
• have not been accepted in any fast-track examination program;

Divisional applications and their corresponding original application might be eligible for this program as long as expedited examination is requested for all applications, simultaneously and independently.

The participation of the application in the BRPTO-JPO PPH Pilot Program shall be requested by any or all the applicants via a specific electronic form. Amongst other documents requested by Rule #235/2019, 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 considered as allowable by JPO and (3) a copy of non- patent literature considered as prior art by the JPO.

The BRPTO will evaluate the applications for PPH according to its request date. 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 may file an appeal against the decision denying participation in the PPH within 60 days from its notification, as long as all documents and information required for the request have been duly submitted with the participation request brief and the brief has been submitted within the legal term.

The application shall be withdrawn from the PPH program, even after its acceptance into it, if any requirement is left unfulfilled or the application is voluntarily divided or amended by the applicant before the first office action on merits is issued by the BRPTO.

Phase II will be limited to 200 applications and the participation into the program is limited to one application per applicant per calendar month, except in the last month of the program, when such limitation shall not be applied.

Participation request briefs in Phase II will be accepted from April 1st, 2019 until March 31, 2021 and this Rule will be in force until all apt applications reach a final decision.

The original Portuguese version of Rule #235/2019 is available here. For its English version or more information on this matter, please contact us at patents@lickslegal.com, we will be glad to assist you.

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