On December 27, 2022, the Brazilian PTO published Ordinance INPI/PR No. 78, which established the guidelines of phase IV of the Shared Examination Pilot Project – Patent Prosecution Highway (PPH). As for phase III of the aforementioned project, in this new phase the Brazilian PTO announced changes to some requirements and procedures related to the request for the PPH.
Among the changes settled, it is outlined the fact that it no longer needs to have an application from the same family granted or that had a decision to grant it published by the Office of Previous Examination that has an agreement signed with Brazil for the project above. According to the aforementioned ordinance, a favorable opinion issued during the international phase or during the processing of a corresponding foreign application, even if it has not yet been granted or granted, is sufficient for acceptance of the Brazilian application in the PPH.
In addition, there was also a change regarding the number of requests for participation in this Program for patent processes classified in the same section of the International Patent Classification. In this new phase, the Brazilian PTO allows up to 250 requests to be filed per IPC section, per year, characterizing an increase of 100 cases in comparison to phase III of the PPH project.
Nevertheless, it should be noted that there was no change as to the other limits established for the program: only one application per applicant can be effected within a weekly cycle and the total number of applications for the project in the annual cycle remained at 800 applications.
Furthermore, the limit of requests of patent applications for the program at issue using the PCT results as basis for the request has also not been changed, only allowing up to 100 participation applications per annual cycle.
Finally, it should also be noted that, as in phase III, the Brazilian PTO will not allow the submission of an appeal for any type of decision made by this Institute in relation to the request for the priority procedure.
For further information regarding phase IV of the PPH program, please do not hesitate to contact us.
