The much-awaited Patent Prosecution Highway (PPH) pilot programme signed between the US and Brazil came into force on January 11, 2016. Despite its limitations, the programme might speed up the examination of Brazilian applications filed and pending in Brazil after the corresponding application is granted by the US Patent and Trademark Office (USPTO).
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).
"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."
Only utility patents, including Patent Cooperation Treaty (PCT) applications, are eligible for the pilot programme at the INPI, which will also consider provisional applications, continuations-in-part and bypass applications as the basis for a request to participate in the programme. The INPI will accept a divisional application if it is filed in order to comply with an office action from the USPTO based on lack of unity of invention.
Design applications, plant patent applications, reexamination applications and reissues may not be used as a basis for a request. In addition, reports on results of the international phase of the PCT, as well as applications subject to confidentiality due to national security, are excluded. Likewise, a USPTO non-final rejection indicating the claims that are considered allowable is also insufficient for requesting participation in the programme.
It is too early to determine how much the pilot programme will benefit applicants enduring the large backlog at the INPI, but this is certainly a first step against the dark side of the Brazilian patent system.
Ricardo Nunes is a partner at Licks Attorneys. He can be contacted at: ricardo.nunes@lickslegal.com
Otavio Beaklini is a patent expert at Licks Attorneys. He can be contacted at: otavio.beaklini@lickslegal.com
Ricardo Nunes, Otavio Beaklini, Licks Attorneys, PCT, patent applications, USPTO, INPI, PPH,
