19 February 2016Jurisdiction reportsRicardo Nunes and Otavio Beaklini

PPH pilot lands in Brazil

Similar fast-track initiatives for expediting examination of applications relating to green technologies, cancer and HIV, as well as applications with at least one infringed claim, reach a final decision in about 11 months. Therefore, instead of waiting for more than a decade for the first office action, some applicants benefiting from the PPH pilot programme may see the Brazilian Patent and Trademark Office (INPI) examine their applications in less than a year.

Unfortunately, the INPI has limited the pilot programme to applications claiming a US or Brazilian priority filed in Brazil after January 2013 and claiming certain inventions in the oil and gas industry, including extraction, refining, transportation and other activities.

While the PPH is a great development, some restrictions imposed by the INPI, such as excluding applications unrelated to the oil and gas field, severely limit the pilot programme and might not withstand challenges in court. Enabling timely patent protection for only a single field of technology while taking more than a decade to examine other applications may violate section 27 of the TRIPS Agreement, which establishes that “patents shall be available … in all fields of technology”.

Such restrictions may also violate the equal protection clause and other constitutional provisions governing the public administration, as well as the federal statute regulating administrative proceedings before federal agencies, which establishes the administrative proceedings that should receive priority from the government.

Act quickly

Since the pilot programme is limited to 150 applications, high speed is necessary and only companies acting quickly will be able to take advantage of this fast-track option.

An applicant must present the INPI with a notice of allowance issued by the USPTO in order to participate in the pilot programme. Aside from documents requested by the INPI’s rule #154/2015 implementing the programme, an applicant needs to file a request using the service code 277 and pay the corresponding fee of R$1,775 ($436).

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