Patent Prosecution Highway – UKIPO Edition

By Dannemann Siemsen

The Brazilian Patent and Trademark Office (Brazilian PTO) published on July 24, 2018 Resolution # 222/2018, which establishes criteria for a new program for fast-track examination of patent applications through a pilot Patent Prosecution Highway (PPH) between the Brazilian PTO and the United Kingdom Intellectual Property Office (UKIPO).

The main requirements for an application filed in Brazil to be included in the PPH program will be:

(i) the patent application must have been filed first with the Brazilian PTO or UKIPO;
(ii) the counterpart UK application must have been analyzed with respect to the requirements of novelty, inventive step and industrial application and also received the “intention to grant” or the “notification to grant” from the UKIPO. The claims of the Brazilian patent application should be conformed to the claims as allowed/granted in the corresponding UK application/patent;
(iii) the patent application must have already been published in the Patent Gazette, or a request for early publication has been filed, or - in the case of PCT applications – the entry of national phase has already been published;
(iv) the examination of the patent application has been requested;
(v) the examination of the patent application has not been suspended awaiting compliance with any requirement previously issued by the Brazilian PTO;
(vi) no annuity fee payment is pending;
(vii) no other request for fast-track examination has been granted and published; and
(viii) the patent application should be classified by the Brazilian PTO in accordance with any the following IPC codes, including the lower subclasses. The patent applications classified as A61K* (as main or secondary classification, including the lower subclasses) are prohibited to be included in the present PPH program.

Each applicant can file a single request for admission to the PPH program per month. Requests for inclusion in this PPH program must be made by July 31, 2020. This program will be valid for two years, 100 Brazilian patent applications being admitted per year.
An English version of Resolution # 222/2018 may be provided upon request.

Thus, if you consider that the above provisions apply to your patent application(s) and you are interested in participating in this PPH Program, we recommend that you instruct us as soon as possible, by providing the numbers of those applications.

This resolution entered into force on August 1, 2018, and is directed to applications filed in Brazil relating to:

	Technical Field	IPC codes
1	Biotechnology	(C07G, C07K, C12M, C12N, C12P, C12Q, C12R, C12S), except A61K
2	Electrical power machines and devices, energy	F21#, H01B, H01C, H01F, H01G, H01H, H01J, H01K, H01M, H01R, H01T, H02#, H05B, H05C, H05F, H99Z
3	Audiovisual technology	G09F, G09G, G11B, H04N-003, H04N-005, H04N-009, H04N-013, H04N-015, H04N-017, H04R, H04S, H05K
4	Telecommunications	G08C, H01P, H01Q, H04B, H04H, H04J, H04K, H04M, , H04N-001, H04N-007, H04N-011, H04Q
5	Digital communication	H04L
6	Communication basic processes	H03#
7	Computer technology	G06# (except G06Q), G11C, G10L
8	IT methods for management	G06Q
9	Semiconductors	H01L

Please note that inter alia pharmaceutical drugs are excluded from the biotechnology field.