(BRPTO’s gazette of July 2nd, 2019)

The BRPTO published on July 2nd, 2019, Rule #242/2019 implementing phase III of the PROSUL PPH Pilot program, which is intended to speed up the examination of pending Brazilian applications with an application from the same family endowed with patentability requirements of novelty, non-obviousness and industrial applicability by one of the offices of PROSUL.

Besides Brazil, the PROSUL members cited by the Rule #242/2019 are Chile, Argentina, Colombia, Ecuador, Paraguay, Peru, Uruguay and Costa Rica.

The Program will accept applications belonging to patent families whose earliest application has been filed at one of the offices of PROSUL, and in case of a PCT application with no priority claim, one of the offices of PROSUL was the receiving office.

To be accepted in PROSUL PPH Phase III, the Brazilian application must:

• have been filed in Brazil for more than 18 (eighteen) months or have a request for anticipated publication submitted to the BRPTO or, in case of international applications, have been duly published by WIPO;
• have its request for examination submitted to the BRPTO; and
• have not been accepted in any other fast-track examination program.

The participation of the application in the PROSUL PPH Pilot Program shall be requested by any or all the applicants via a specific electronic form. Amongst other documents requested by Rule #242/2019, 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 patentable claims examined by the PROSUL’s office and (3) a copy of non-patent literature considered as prior art by the PROSUL’s office. The documents must be translated into Portuguese, English or Spanish, in case it is not in one of those languages.

In case of divisional applications, each of the original application and its corresponding divisionals must have a request for participation on any of BRPTO’s expedited examination or PPH program, and must simultaneously meet the requirements established by the respective expedited examination/PPH program.

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. Appeals against rejections on PPH requests filed for divisional applications and their original application are not available, except when the divisional applications and their original application comply with the provisions mentioned in the previous paragraph.

The BRPTO shall annul the participation of an application in the present PPH program if the applicant voluntarily i) divides the application or ii) submits amendments before the issuance of the first BRPTO’s technical opinion.

The participation into the program is limited to 1 (one) application per applicant per calendar month-period, except in the last month of the program, when such limitation shall not be applied.

Requests for participating into Phase III of PROSUL PPH Pilot program will be accepted until June 31, 2021 and this Rule will be in force until all accepted applications reach a final decision.

The original Portuguese version of Rule #242/2019 is available here. Please contact us for the English version.

‍