By Mariano Municoy. Partner, Lawyer, and Head of Moeller’s Regional Legal Department.
Since 2016, the Brazilian PTO (INPI) has been implementing several bilateral Patent Prosecution Highway (PPH) programs with different PTOs in order to accelerate substantive examination of patent applications while reducing the large still existing backlog.
The first round of bilateral agreements consisted of a phase I pilot program and among the partnering PTOs were those of the United States of America, Austria, the European Patent Office, Japan, China, Denmark, the United Kingdom, South Korea, Sweden, and Singapore.
On December 21st, 2020 INPI issued Ordinance #404/2020 to bring Phase II of those PPH pilot projects forward from December 1, 2022, to January 1, 2021, which signals the success of the system and its expected growing use.
According to this regulation, Phase II is going to last until December 31st, 2024, will have a limit of 600 applications per year (instead of the 400 of Phase I) and each applicant may request up to 1 (one) case per week (instead of one per month of Phase I).
One very important difference between Phase I and Phase II is that under Phase II the Office of Earlier Examination (OEE) and the Office of First Filing (OFF) must not be the same.
So now a patent application filed with any OFF having a bilateral PPH can be expedited based on the examination performed by any other OEE partner on a PPH where there is a patent of the same family examined with positive result.
The claimed subject matter of the application object of the request must not be broader than that of the patent examined by the OEE nor should it include prohibited or not patentable subject matter according to Brazilian Law and regulations.
As under Phase I, a chart comparing both sets of claims must be filed with the request but under Phase II it is also possible to just file a declaration confirming that the new set of claims in the Brazilian application are a translation of the claims as accepted by the OEE
In order to speed up the examination, the corresponding official fees must be paid, and, unlike under Phase I, decisions issued by INPI refusing to include an application can not be appealed.