On January 5, 2015, the Brazilian Institute of Industrial Property (INPI) published Resolution 154/2015 establishing the guidelines of the Patent Prosecution Highway (PPH) Pilot Program between the United States Patent and Trademark Office (USPTO) and INPI. The program was launched on January 11, 2016. INPI has also made available a User Guide on its website (only in Portuguese).
In order for a patent application to be eligible for the PPH program at INPI, it must comply with the following requirements:
- It must be a patent application in the oil and gas industry (International Patent classification Codes B01, B63, C09K8, C10, E02, E21, F15, F16, F17, G01).
- It must have been filed in INPI after January 1, 2013.
- It must have been published in the IP Magazine.
- The substantive examination must have been requested.
- It cannot have been granted another form of fast-track examination.
- The subject matter of the patent application cannot be in litigation in Brazil.
- It can be neither a divisional application nor the parent application of a divisional application.
Applicants requesting PPH examination in INPI must file a comparative table of the claims granted by the USPTO and the corresponding pending claims in INPI.
The duration of the program is up to two years, or until 150 applications have been received.
Originally published in www.inpi.gov.br on 18 January 2016
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
