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Patent Prosecution Highway between Brazil and USA

16 December 2015

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The United States Patent and Trademark Office (USPTO) and the Brazilian National Institute for Industrial Property (INPI) have signed a Memorandum of Understanding (MoU) to launch a Patent Prosecution Highway (PPH) Pilot Program, which will run for two years from January 2016.

This pilot program will implement fast-track patent examination procedures and sharing of information on the examination conducted by both offices, in order to enable patent applicants from Brazil and USA to obtain patents faster and more efficiently. The pilot program will be limited to 150 patent applications per office.

According to the PPH Program, patent applicants with claims that have been determined to be allowable/patentable by either INPI or USPTO, may request accelerated examination of the equivalent applications pending before the other office.

In this pilot phase of the program, the INPI will only accept PPH requests from US patent applications in the oil and gas industry that have been filed during the last three years. Brazilian applicants may request fast-track examination in the USPTO for applications in any technical field.

The PPH pilot program is one of the consequences of the MoU signed on July 30, 2015 between the Brazilian Minister of Development, Industry and Foreign Trade (MDIC), Armando Monteiro, and the US Secretary of Commerce, Penny Pritzker, to strengthen the trade relations between Brazil and USA. In addition to the PPH, Brazil and USA have also recently signed agreements on product certification and regulatory convergence.

Fast-track examination of patent applications

On November 10, 2015, the Brazilian PTO (INPI) published Resolution 151/2015, establishing the possibilities for requesting fast-track examination of patent applications in Brazil. This resolution amends previous Resolution 68/2013, which is consequently revoked.

Resolution 151/2015 includes new options to request the priority examination of patent applications in Brazil, namely:

Fast-track examination can be requested by the applicant when evidence is proven that he/she has a physical or mental disability or a serious disease (as established in art. 69-A, II and IV of Law 9.784 of January 29, 1999 and art. 4 of Decree 3.298 of December 20, 1999).
In order to request such priority examination, a copy of the expert’s report issued by the Official Medical Service of Brazil, the States, the Federal District or the Municipalities, with evidence of the health condition, must be filed.

Fast-track examination can be requested by third parties who prove that they are owners of a patent or a patent application relating to, or possessing, the technology of the patent application for which priority examination is requested.
In order to request such priority examination, the following documents must be filed:

a) a copy of the patent or patent application of the party requesting priority examination or evidence that the party requesting priority examination owns the technology object of the patent application; and

b) a petition with information to help with examination in order to demonstrate that the object of the patent application belongs to the prior art.

The possibilities for requesting fast-track examination established in previous Resolution 68/2013 are maintained as follows:

Requests by the applicant:

a) he/she is an individual over 60 years old;

b) the subject matter of the patent application is being reproduced by unauthorized third parties; and

c) the grant of the patent is a condition for obtaining financial resources from official credit institutions;

Requests by third parties:

d) the third party has been accused by the applicant of unauthorized reproduction of the claimed subject matter.

In all cases, the substantive examination must be requested before the request for priority examination.

Finally, INPI also offers the following possibilities for fast-track examination of patent applications:

- Resolution Nº 80/2013, still in force, allows the Ministry of Health to request priority examination of patent applications related to products or processes, considered strategic within the National Health System; and the applicant or any interested third party for applications covering cancer, AIDS or neglected diseases.

- The “Green Patent” Pilot Program, which will last until April 2016 and will be limited to the first 500 patent applications received by INPI, allows applicants of patent applications related to alternative energy sources, transportation, energy conservation, waste management or agriculture, to request fast-track examination.

- Patent Prosecution Highway between Brazil and USA, which will run for two years from January 2016.

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