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Client Alert – BPTO implements PPH pilot project with EPO

On November 7, 2017, the Brazilian Patent and Trademark Office (BPTO) published Resolution No. 202, which implements the Patent Prosecution Highway (PPH) pilot project with the European Patent Office (EPO).

Following the traditional PPH format for international cooperation, a patent application may be fast-tracked at the Office of Later Examination (OLE) where a member of the same patent family has been allowed by the Office of Earlier Examination (OEE).

The BPTO will begin receiving fast-track requests from eligible applicants as of December 1, 2017. While this cooperation should last for the following two years, fast-tracked examination will be limited to 600 patent applications at this time (300 applications per year). During this pilot phase, the BPTO will only receive patent applications related to technologies applied to medicine or those in the chemistry field, including basic chemistry, organic and fine chemistry, polymeric and macromolecular chemistry, as well as medical technologies, with the exception of drug-related applications. Applications classified with any of groups of IPC code A61K (other than group A61K8) are also excluded from the program.

Applying for the PPH can prove beneficial. The BPTO is currently taking about 10 years to examine patent applications in the field of chemistry. Conversely, the timeline for examination of patent applications processed under other fast-track programs (like the “Green Patents” program or the PPH programs with the USPTO or the JPO) is of approximately 1 year.

In order to be eligible for such a program, the relevant patent application should meet the following conditions:

  1. It must have been published (or been accepted to national phase if filed via PCT) with examination already requested;
  2. It must have a family member allowed by the EPO;
  3. It must have at least the first member of the patent family filed with the EPO or the BPTO (or, in the PCT scope, with the EP/RO or BR/RO);
  4. It must not be under litigation in Brazil;
  5. It must have all the annuities duly paid;
  6. It must not have been accepted in any other fast-track examination program.

Divisional applications will only be accepted if (a) they derive from the original application and (b) were divided upon request of the EPO when examining the EP corresponding application due to lack of unit of invention.