The Brazilian Patent and Trademark Office (BPTO) published, by means of Ordinance n° 78, dated December 16th 2022, phase IV of the Patent Prosecution Highway (PPH) shared examination Pilot Project.

This new phase of the PPH follows the same criteria previously established in phase III, with the following changes now introduced:

• The request must occur between 01/01/2023 and 12/31/2025;
• There is a new limit of 250 requirements per International Patent Classification Section (IPC) per year.

As in phase III, there is a limit of a single requirement of the same owner or applicant per week. Furthermore, phase IV is restricted to 800 PPH requirements per annual cycle, which will obey the order of the date and time of the priority request protocol. The result from IPRP is still accepted as a basis for PPH requirements, limited to 100 requirements of PCT-PPH per year.

In order to participate in the PPH program, the application shall meet the following conditions:

• It must belong to a patent family wherein at least the oldest application was filed at the BPTO or at a Patent Office that has a PPH agreement with the BPTO, or wherein at least one of these offices was selected as receiving office under the PCT;
• It must belong to a patent family wherein a Patent Office that has a PPH agreement with the BPTO has issued: 1) a granting or allowance decision; OR 2) an International Preliminary Report on Patentability (IPRP) indicating patentable subject matter in the application;
• It must belong to a patent family wherein the patent office that has a PPH agreement with the BPTO has performed a technical examination on merits and indicated patentable subject matter in the application.
• The Patent Offices of the oldest priority, issuing an allowance/granting decision or issuing the IPRP may be different therebetween, provided that all have a PPH agreement with Brazil.

Currently, the following Countries/Regions have a PPH agreement with Brazil: Austria, China, South Korea, Denmark, Spain, United States, European Patent Office, France, Japan, Portugal, United Kingdom, Singapore and Sweden, as well as offices part of the PROSUL agreement.

The program continues to contemplate patent applications that claim protection for innovations belonging to all areas of knowledge, enabling to seek protection for subject matters that are identical or more restricted than those considered patentable by the office of the first examination, and to forbidden addition of any matter not examined by said office.

It is important to highlight that, in the event one or more divisional applications are filed before the PPH requirement, both the original application and the divisionals will have the examination accelerated. In this situation, Ordinance No. 78/2022 now makes clear the need to file the examination request for the original application and its divisionals prior to the PPH requirement.

If you are interested in obtaining more details, have specific questions or wish to participate in the program, do not hesitate to contact us at mail@kasznarleonardos.com.