As informed in our newsletter 11/15 # 14 the Patent Offices of Brazil and the United States of America instituted a joint PPH pilot program. The details of the program have now been regulated by Resolution 154/2015 of the President of the Brazilian Patent Office, issued on
21 December 2015. A translation into English language of this regulatory instrument is attached here to.
The resolution confirms the scope of the program and defines the conditions to be met for acceptance of an application, as well as the documents that must be enclosed with the request form.
The Brazilian Patent Office has limited the number of applications that will be accepted to 150 and their subject matter is restricted to oil and gas technologies — actually Annex 1 of the Resolution defines a closed list of classes of the International Patent Classification to which an application must belong. This list is repeated below for your ready reference:
1. B01 – Physical or Chemical Processes or Apparatus in General;
2. B63 – Ships or other waterborne vessels; related equipment;
3. C09K8 – Compositions for drilling of boreholes or wells; Compositions for
treating boreholes or wells, e.g. for completion or for remedial operations;
4. C10 – Petroleum, gas or coke industries; fuels; lubricants; peat;
5. E02 – Hydraulic engineering; foundations; soil-shifting;
6. E21 – Earth or rock drilling; mining;
7. F15 – Fluid-pressure actuators; hydraulics or pneumatics in general;
8. F16 – Engineering elements or units; general measures for producing and
maintaining effective functioning of machines or installations;
9. F17 – Storing or distributing gases or liquids;
10. G01 – Measuring; Testing.
Further to the above, the conditions to be met are several. Most can be found in Article 7 of the resolution. Importantly, the application must:
– have been filed in Brazil on or after 01 January 2013;
– be an application for a patent of invention (utility model patents are excluded);
– have been published in the Brazilian Industrial Property Official Gazette;
– have had its examination requested and all previous annuities paid;
– have been allowed by the USPTO.
A specific request form has been created for applying to the program. The documents that must accompany it and the statements that must be submitted by the applicant are defined in articles 12 and 13. Documents originally in
Portuguese, English or Spanish will not need to be translated. A simple translation will be accepted for documents originally in other languages.
A working group has been created to assess each candidate application's compliance with all the acceptance criteria. The decisions of this working group are not appealable and will be published in the Brazilian Industrial
Property Official Gazette.
Should you be interested in more details, have specific doubts or immediately applying for the program, please let us know. We will be delighted to assist you.