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Client Alert – BPTO implements PPH pilot project with SIPO

On January 30, 2018, t he Brazilian Patent and Trademark Office (BPTO) published Resolution No. 209, which implements the Patent Prosecution Highway (PPH) pilot project with the State Intellectual Property Office of the People’s Republic of China (SIPO).

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 began receiving fast-track requests from eligible applicants as of February 1, 2018. While this cooperation should last for the following 2 (two) years, fast-tracked examination will be limited to 200 participation requests at this time, wherein up to 20 thereof can be Mottainai requests (wherein the OEE is the office where the second filing was made). During this pilot phase, the BPTO will only receive patent applications related to IT, packaging, measurement technologies or chemical fields, with the exception of drug-related applications, which are not encompassed by this program. Applications classified with any of IPC group codes A61K (even if A61K is a secondary classification) 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 (one) 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 patent family member allowed by the SIPO;

iii.        It must have at least the first member of the patent family filed with the SIPO or the BPTO (or, in the PCT scope, with the CN or BR as receiving office);

  1. It must not be under litigation in Brazil;
  2. It must have all the annuities duly paid;
  3. It must not have been accepted in any other fast-track examination program;

vii.       It must not have office actions pending on replies;

viii.      It must not be already under substantive examination.

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