Brazil Implements Patent Prosecution Highway with the United Kingdom – Opportunities for Biotechnology Applicants

On July 24, 2018, the Instituto Nacional da Propriedade Industrial (INPI) published Rule #222/2018 implementing the Patent Prosecution Highway (PPH) Pilot program (PPH program) with the United Kingdom patent and trademark Office (UKIPO).  Implementation of this PPH program may expedite the examination of pending Brazilian patent applications which have received a “Notification to Grant” or “Intention to Grant” issued by the UKIPO in counterpart applications.  This is good news for biotechnology Applicants as discussed further below.

The program will accept applications belonging to patent families whose earliest application has been filed with INPI or the UKIPO, or for PCT applications containing no priority claim(s), those filed using INPI or the UKIPO as the receiving office.

Applications eligible for the PPH program include:

  1. Biotechnology;
  2. Electric apparatus and machines and power;
  3. Audiovisual technology;
  4. Telecommunications;
  5. Digital communications;
  6. Communication basic processes;
  7. Computer technology;
  8. Information technology methods and management; and
  9. Semiconductors

Additionally, the application must also be specifically classified under the IPC codes listed in the table below to be accepted:

Technical area

IPC Code (Includes all subcategories within an indicated classification unless otherwise noted)

Biotechnology C07G, C07K, C12M, C12N, C12P, C12Q, C12R, C12S (except for A61K (drug-related patent applications))
Electric apparatus and machines and power F21#, H01B, H01C, H01F, H01G, H01H, H01J, H01K, H01M, H01R, H01T, H02#, H05B, H05C, H05F, H99Z
Audiovisual technology G09F, G09G, G11B, H04N-003, H04N-005, H04N-009, H04N-013, H04N-015, H04N-017, H04R, H04S, H05K
Telecommunications G08C, H01P, H01Q, H04B, H04H, H04J, H04K, H04M, H04N-001, H04N-007, H04N-011, H04Q
Digital communications H04L
Communication basic processes H03#
Computer technology G06# (G06Q not included), G11C, G10L
Information technology methods and management G06Q
Semiconductors H01L

To be accepted into the PPH Pilot program, the Brazilian patent application must:

  1. Have been filed in Brazil for more than eighteen months or requested anticipated publication by INPI (as provided for in Article 30 Paragraph 1 of the Brazilian Patent Statute); or, for PCT national phase applications, the corresponding PCT application must have already been published by WIPO;
  2. A request for examination submitted to INPI; and
  3. Have not been accepted in any other fast-track examination program.

Divisional and their corresponding original applications may be eligible for the program provided that the PPH is requested for each application independently.

In terms of mechanics, participation in the PPH Pilot program must be requested electronically.  Documents that must be submitted along with the request include: (1) documents evidencing that the application meets the above requirements; (2) a table demonstrating the correspondence between the pending claims in the Brazilian application and those allowed by the UKIPO; and (3) a copy of any non-patent literature deemed to be prior art by the UKIPO.  A translation must be submitted for any documents not in Portuguese, English or Spanish.

It is important to note that an application will be removed from the PPH program if the Applicant voluntarily (1) divides the application; or (2) submits any amendments before issuance of a first technical opinion on the application by INPI.

INPI will evaluated applications submitted for compliance with the requirements of the PPH program according to the date the request is made.  Applications that fail to meet the requirements will either be (1) given an opportunity to correct any defects or irregularities within 60 days after issuance of an Office Action; or (2) denied participation in the PPH program.  Applicants may appeal any decision denying participation in the PPH program within 60 days of notification thereof, provided that all the requisite documents and information required for participation in the program and a brief are submitted within this period.

The PPH program will be limited to 100 applications per year (for a total of 200 applications at most over the life of the program).  An Applicant will be limited to one application per calendar month except during the last month of the program, when this limitation will not be applied.  Request for participation in the PPH program with the UKIPO will be accepted from August 1, 2018 until July 31st, 2020.  Rule #222/2018 will remain in force until a final decision is reached for each application accepted into the program.

This post was written by Lisa Mueller.

 

 

Author: Lisa L. Mueller

I am a Patent Attorney with Casimir Jones.

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