Brazil’s Phase II of the Patent Prosecution Highway Program

January 20, 2021


Brazilian PTO published on December 29, 2020, Phase II (Ordinance No. 404/2020) of Patent Prosecution Highway (PPH) program, implementing new rules for the acceptance into the program. The ordinance is in force since January 01, 2021, and will be valid until December 31, 2024. Phase II will follow the same criteria as phase I with the following changes:

1. an applicant can submit one PPH request every weekly cycle (instead of the previous monthly cycle);

2. the program will allow a total of up to 600 requests per annual cycle;

3. the program will allow up to 150 requests per annual cycle related to the same Section of the International Patent Classification (IPC); and

4. if the PPH request is not admitted into the program, the decision cannot be appealed.

The additional rules for an application to qualify for the PPH remain the same, i.e., 1) the Brazilian application must have been already published or have the request for anticipated publication duly filed, 2) it is necessary to pay the fee related to the regular technical examination, 3) the claimed matter must bear an equal or more restricted scope than the one considered as patentable by a foreign PTO, 4) the voluntary filing of divisional applications or claim amendments to the application in the period between the admission in the PPH program and the publication of the first Written Opinion will cause the PPH request to be canceled.

A point to remember is that patent applications for which technical examination has already started will not be admitted in the program. In addition, the admission in the PPH program does not characterize the automatic grant of the patent, BRPTO will carry out its examination processes.

Brazil has signed PPH agreements with the following jurisdictions: United States, Europe, Japan, China, Austria, Sweden, United Kingdom, Denmark, South Korea, Singapore, and PROSUR (Argentina, Chile, Colombia, Costa Rica, Dominican Republic, El Salvador, Ecuador, Nicaragua, Panama, Paraguay, Peru, and Uruguay).

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