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PPH Program between the Brazilian Patent Office and the European Patent Office

The European Patent Office (EPO) and the Brazilian Patent Office (INPI) recently concluded an agreement on a Patent Prosecution Highway (PPH) Pilot Program. The aim of this program is to enable applicants to use positive examination results from one of these patent offices to request fast-track examination of the patent application at the other patent office.

Considering the huge backlog of patent applications at the INPI, which has led to an average waiting time for examination of more than 10 years, this program provides a great tool to expedite patent examination in Brazil. However, it is only available for applications in the field of chemistry and technologies applied to medicine, with the exception of drugs.

The main requirements for a Brazilian application to be accepted under this PPH program, as established by Resolution No. 202/2017, are as follows:

- the first application of the family was filed at the INPI or the EPO, or for PCT applications, used the INPI or the EPO as receiving office;
- the counterpart European application has been granted;
- the Brazilian application has been published, or at least a request for early publication has been filed;
- examination of the Brazilian application has been requested, but no office actions have been issued yet by the INPI;
- all annuity fees are duly paid;
- the application has not been accepted in any other fast-track examination in Brazil;
- the application is not involved in a lawsuit in Brazil;
- the application is not a divisional application (except where the divisional application results from the divisional of the original application due to a rejection of lack of unity of invention);
- the application has been classified by the INPI with any of the following IPC codes, including the lower subclasses. However, patent applications classified as A61K (as main or secondary classification, including the lower subclasses) are not acceptable under this program.

*applications classified under code A61K8 may join the program, provided that there are no additional A61K classes (preparations for medical, dental or toilet purposes) assigned thereto.

In order to apply for participation in this PPH pilot program:

- the claims in the Brazilian application must be conformed to those granted for the counterpart European application;
- documents proving that the above conditions are met must be submitted;
- a table showing the correspondence between the claims in the Brazilian application and those allowed in the European application must be filed;
- a copy of non-patent documents cited in relation to the European application must be submitted;
- the prescribed fee must be paid.

A maximum of 600 applications will be accepted during the 2 year period of this PPH pilot program (300 applications per year).