On July 6, 2024, the Brazilian PTO joined the Global Patent Prosecution Highway (GPPH) program, representing another significant advancement in Brazil’s intellectual property framework. This initiative, aligned with the 2023-2025 Action Plan of the Intellectual Property National Strategy, aims to streamline patent examination processes and enhance Brazil’s participation in the global IP system.
On December 10, 2024, the BRPTO issued Ordinance INPI/PR Nº 48 of November 29, 2024, initiating Phase V of the Patent Prosecution Highway (PPH) program. Effective January 1, 2025, this Ordinance introduces pivotal changes to the PPH framework, notably increasing the annual request limits and removing the previous weekly submission restriction per applicant.
Transition to the Global PPH (GPPH)
BRPTO’s adherence to the GPPH represents a shift from bilateral agreements to a multilateral collaboration involving 35 Intellectual Property Offices worldwide. This integration facilitates accelerated patent examinations by allowing applicants to leverage favorable examination outcomes from any participating office to expedite corresponding applications in Brazil.
The GPPH framework standardizes procedures across member offices, improving predictability, efficiency, and success rates in patent prosecution. Applicants benefit from reduced redundancy in examinations and faster patent grants, fostering a more innovation-friendly environment.
Increase in Annual Request Limits
Under the previous Ordinance #78/2022, the PPH program capped annual requests at 800, with a maximum of 250 per section of International Patent Classification (IPC) and 100 based on Patent Cooperation Treaty (PCT) results. The new Ordinance #48/2024 significantly increased this cap to 3,200 requests per year, including up to 1,000 requests within the same section of the IPC and removing the previous limit based on PCT results.
This substantial increase reflects the BRPTO’s commitment to accommodating growing demand for expedited patent examinations and aligns with global best practices. It provides applicants with greater opportunities to accelerate the prosecution of their patent portfolios in Brazil. Additionally, with the increase in the number of examiners that joined the BRPTO last August, the expectation is that the average time for PPH examination will remain approximately the same.
Removal of Weekly Submission Limitation
A notable change in the new Ordinance #48/2024 is the removal of the restriction that limited applicants to one PPH request per week. This removal grants applicants the flexibility to submit multiple PPH requests simultaneously, enabling enhanced management over extensive patent portfolios.
Implications for Patent Applicants
These developments present significant advantages for patent applicants:
· Accelerated Examination: Leveraging the GPPH framework enables faster patent prosecution, reducing time-to-grant.
· Increased Flexibility: Higher annual request limits and the removal of weekly submission constraints allow for more strategic and efficient portfolio management.
· Global Harmonization: Alignment with GPPH standards facilitates smoother international patent filings and prosecutions.
Strategic Recommendations
To maximize the benefits of these changes, applicants should consider the following strategies:
1. Portfolio Assessment: Review existing and planned patent applications to identify candidates for accelerated examination under the GPPH framework.
2. Documentation Alignment: Ensure that application documents meet the standardized requirements of the GPPH to facilitate seamless processing.
3. Monitoring Updates: Stay informed about further procedural guidelines from BRPTO to adapt strategies accordingly.
Conclusion
The BRPTO’s integration into the GPPH and this subsequent update incur in a progressive step towards a more efficient and globally harmonized patent system in Brazil. These changes enhance the country’s innovation landscape by providing more robust and timely IP protection.
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