The Brazilian National Institute of Industrial Property (INPI) published Resolution implementing another pilot program for fast-track patent examination

26 . July . 2018 |

The Brazilian National Institute of Industrial Property (INPI) published on Tuesday (24) Resolution No. 222/2018, implementing another pilot program for fast-track patent examination (PPH – Patent Prosecution Highway), this time with the UK Intellectual Property Office (UKIPO). This is one of the measures adopted by INPI for expediting the examination of patent applications, reducing the backlog. In this model of agreement between two countries or regions, the examination of the patent application in one of the countries may be accelerated, after being granted by the other, upon request by the applicant and if the conditions for joining the program, as published in the Resolution, are met. By joining the program, it is estimated that the examination period can be reduced to about nine months – time until the examination, after entering the PPH pilot program.

In this particular case of PPH between INPI and UKIPO, the technologies contemplated belong to the following technical fields: biotechnology; electrical machinery, apparatus and energy; audiovisual technology; telecommunications; digital communication; basic communication processes; computer technology; IT methods for management; and semiconductors, according to the international patent classification set out in the Resolution, except for applications related to the technical field of drugs. The application must belong to a family whose oldest application was filed with INPI or UKIPO or, in case of PCT, where the receiving offices were in Brazil or in the UK. Participation on the program may be requested between August 1, 2018 to July 31, 2020, having a limit of up to 100 applications per year, encompassing up to 200 in the period. The examination will respect the order of the date of protocol for entering into the priority program or the date of the protocol for fulfilling eventual formal requirement, whichever occurs later. Additionally, the application must have been published and the examination requested. Each applicant can participate with up to 1 process each monthly cycle, except for the last month, when there will be no limit. The patent application must have been amended to sufficiently correspond to the matter considered to be patentable by UKIPO, given that the legal dispositions are complied with. Finally, it is worth pointing out that the acceptance into the program will be canceled ex officio in case of voluntary division or modification of the patent application before the publication of the first technical opinion.

Note that INPI currently has PPH examination programs with other partner offices: USPTO (American), JPO (Japanese), PROSUL (PROSUL Offices – Argentina, Brazil, Chile, Colombia, Costa Rica, Ecuador, Paraguay, Peru and Uruguay), EPO (European) and SIPO (Chinese). Check here for the main information (in Portuguese) about the programs in force and still planned (contact us in case translation is needed).

For further information, contact our team.

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