The Patent Prosecution Highway (PPH) Pilot Program and the Brazilian PTO – Recent Updates

 

The Brazilian Patent and Trademark Office (Brazilian PTO, also known as the Instituto Nacional da Propriedade Industrial (INPI)), has made two major announcements regarding the Patent Prosecution Highway (PPH) Pilot Program in Brazil since the beginning of November.

PPH Program with the European Patent Office

On November 7, 2017, the Brazilian PTO published Rule #202/2017 implementing the PPH Pilot Program (Program) with the European Patent Office (EPO).  The hope is that the implementation of the Program will result in faster examination of pending Brazilian patent applications having a counterpart allowed by the EPO.

Logistically, the Program will accept applications belonging to patent families whose earliest application has been filed in the Brazilian PTO or the EPO, or for PCT applications, where either the Brazilian PTO or EPO was used as the Receiving Office.  All applications are eligible with one notable exception.  Specifically, while applications in the field of chemistry or related technologies applied to medicine may be eligible for the Program, drug-related patent applications are specifically excluded.  More specifically, the application must be classified under the International Patent Codes (IPC) listed in the below table to be accepted.  However, applications classified under any of the group of A61K subclass, with the exception of group A61K8, are also excluded from the program.  Generally, IPC group A61K relates to preparations for medical, dental, or toilet purposes.  Group A61K8 relates to cosmetics or similar toilet preparations.

TECHNICAL AREA IPC CODE
Basic Chemistry A01N, A01P, C05#, C06#, C09B, C09C, C09D, C09F, C09G, C09H, C09J, C09K, C10B, C10C, C10F, C10G, C10H, C10J, C10K, C10L, C10M, C10N, C11B, C11C, C11D, C99Z
Organic and fine chemistry C07B, C07C, C07D, C07F, C07H, C07J, C40B, A61K8¹, A61Q
Polymeric and macromolecular chemistry C08B, C08C, C08F, C08G, C08H, C08L
Medical technologies A61B, A61C, A61D, A61F, A61G, A61H, A61J, A61L, A61M, A61N, H05G

To be accepted in the Brazilian PPH program, an application must:

  1. Have a notification of filing or entry in the national phase in Brazil published by the Official Gazette of the Brazilian PTO;
  2. Already have been published (which can be effected by international publication (such as by a PCT application, if applicable);
  3. Have submitted a request for examination;
  4. Have all annuity fees duly paid;
  5. Have no pending Office Action awaiting response by the Applicant;
  6. Not have been accepted in any other fast-track examination program in Brazil;
  7. Not have been involved in a lawsuit in Brazil; and
  8. Not be a divisional application (except in the situation where the divisional application results from an original parent application due to a rejection due to a lack of unity of invention).

A request for participation in the Program must be made by all the Applicants in electronic form.  In addition to the other documents required by Rule #202/2017, an Applicant must submit, together with the request:

  1. Documents proving that the application meets the requirements of the Program;
  2. A table providing the correspondence between the claims in the Brazilian application and the allowed claims in the European application; and
  3. A copy of any non-patent prior art documents.

The Brazilian PTO will evaluate applications based on the date on which the request is filed.  Any applications that do not meet the requirements will receive an Office Action setting a sixty (60) day period to allow for any irregularities to be corrected or will be otherwise be denied participation in the Program.  Any application denied participation will be examined according to the normal procedures of the Brazilian PTO.  An applicant denied participation in the Program has an opportunity to appeal such a decision within 60 days of receipt of notification of denial.

The Brazilian-EPO PPH Pilot Program will begin on December 1, 2017 and will receive applications for a period of two (2) years.  A maximum of 300 applications will be accepted each year during the two (2) year period (for a total of 600 applications).

Brazil and the Chinese Patent Office 

On November 13, 2017, the Brazilian PTO and the Chinese Patent Office (SIPO, also known as the State Intellectual Property Office of the People’s Republic of China) signed a memorandum of understanding establishing a future PPH Pilot Program (Program) between the two offices.  Much like the Program described above in connection with the EPO, Applicants will be able to request faster examination for a Brazilian patent application whose Chinese counterpart has already been approved.

A rule setting for the requirements for eligibility for the Program is expected to be published in February.

Please continue to watch the BRIC Wall Blog for further updates on the PPH Pilot Program in Brazil.

This post was written by Lisa Mueller and Roberto Rodrigues Pinho (https://www.linkedin.com/in/roberto-rodrigues-pinho/)

Brazilian Patent Office and the Patent Prosecution Highway Program

The Patent Prosecution Highway (PPH) pilot program between the U.S. Patent and Trademark Office (U.S. PTO) and the Brazilian Patent and Trademark Office (INPI) began on January 11, 2016. The goal of the PPH Pilot Program is to speed up the examination of patent applications pending before INPI once a notice of allowance has been issued by the U.S. PTO in a corresponding U.S. application (including related family members).

The PPH Pilot program is limited to applications filed after January 1, 2013 that claim priority to a U.S. or Brazilian application. In addition, the application must claim inventions related to oil and gas technologies, including extraction, refining, transportation and other activities–specifically, those encompassed by International Patent Codes B01, B63, C09K8, C10, E02, E21, F15, F16, F17, G01.

To participate in the PPH pilot program, an applicant must submit a copy of the Notice of Allowance issued by the U.S. PTO. Additionally, pursuant to Rule # 154/2015, an Applicant must file a request (using service code 277) and pay the requisite fee of R$1,775 (approximately US $420).

On February 10, 2016, INPI granted priority examination to the first patent applications filed under the PPH pilot program. The applications were: BR 10 2013 000290-9 filed by Suncoke Technology and Development LLC on January 4, 2013; BR 10 2013 032934-7 filed by Afton Chemical Corporation on December 20, 2013; and BR 10 2014 017479-6 filed by Afton Chemical Corporation on July 16, 2014. The small number of Applicants (just two) invoking the PPH pilot program thus far might be the result of the subject matter limitations of the PPH pilot program.

While the PPH pilot program can be viewed as an important step by INPI in addressing the patent application backlog, the limitation of the program only to oil and gas inventions (to the exclusion of inventions in important fields such as telecommunications, pharmaceuticals and biotechnology), may result in Rule # 154/2015 being challenged before Federal Courts.

An English translation of INPI’s Rule # 154/2015, implementing the Pilot Program, is available here:  RULE154

This post was written by Lisa Mueller and Roberto Rodrigues.

 

Divisional Applications and the Patent Prosecution Highway Program between U.S. and Mexico

The Patent Prosecution Highway (PPH) Program between the Mexican Institute of Industrial Property (IMPI) and the United States Patent and Trademark Office (USPTO) was established as a permanent program on September 1, 2012. The object of this program is to accelerate the granting of Mexican applications that have a granted U.S. counterpart, having a common claim of priority, when both the Mexican and U.S. national phase applications derive from the same PCT application.

It is important to note that in order to request PPH examination in Mexico, the following issues should be considered:

  • The Mexican application must be published in IMPI’s gazette.
  • The request for PPH examination must be filed before the start of substantive examination.
  • At least one of the claims granted in the U.S. counterpart must be included in the Mexican application.
  • The PPH request must include a comparative table between the claims granted in the U.S. application and the claims pending in the Mexican application.

There is a practice in the Mexican Patent Office in which it is possible to request PPH examination for a parent application and, at the same time, request PPH examination for one or more divisional applications. In order for this to happen, the USPTO must have identified patentable matter in the claims of both the parent and the divisional application. In other words, in a single day, an applicant may file a PPH request for the parent case, a Mexican divisional(s) application(s) and a PPH request for the divisional(s) application(s). The reason this is possible is because divisional applications are not published in IMPI’s gazette until granted.

It is important to note that the above information is not contained in the guidelines for requesting participation in the PPH program at IMPI. This information has been generated according to Olivares’ experience in filing requests for PPH examination between USPTO and IMPI.

Requests for PPH examination are an attractive option for U.S. applicants because it is possible to obtain a Notice of Allowance for a corresponding Mexican application approximately 2 to 3 months after the PPH request is filed.

This post was written by Lisa Mueller, Mauricio Samano and Jose Luis Salgado of Olivares.