“The adoption of the GPPH by the BPTO represents a significant advancement for the prioritized processing of patent applications in Brazil.”
The Patent Prosecution Highway (PPH) is a bilateral partnership between different intellectual property offices around the world that facilitates the acceleration of patent examination. In Brazil, the Brazilian Patent and Trademark Office (BPTO) participates in this program with the aim of expediting patent examination and improving the efficiency of processing applications in the country. In Brazil, the program is regulated by Ordinance No. 78/2022.
The PPH in Action: Reducing Patent Decision Times
Through the PPH, a patent application whose claims have been deemed patentable by a partner Examination Office can undergo prioritized examination at another partner Office, which has not yet started its examination, using the results from the first office’s examination. This prioritization significantly reduces the waiting time for a decision from the BPTO from about 3.5 years to approximately 136 days from the date of the examination request, allowing companies to make more informed and secure strategic decisions regarding the protection of their innovations.
However, the program currently faces limitations, such as the maximum of 800 requests per year for participation. In 2024, this number was reached in July. Additionally, there are restrictions on the eligibility of applications that limit their applicability. For example, to participate in the PPH, the application must belong to a patent family whose oldest application was filed with the BPTO or any partner institute. Another barrier is the limitation of only one request per applicant per week, requiring a strategic choice by applicants about which applications should have their examination prioritized through this program, considering the annual restriction limit.
Brazil’s Entry into the Global Patent Prosecution Highway
These limitations, however, may soon change as a result of the BPTO’s entry into the Global Patent Prosecution Highway (GPPH) program on July 6, 2024. The GPPH is a multilateral cooperation program involving 27 intellectual property offices, aiming to accelerate the processing of patent applications through the sharing of examination results from any participating office, that indicates the existence of patentable subject matter, including results obtained during the examination of Patent Cooperation Treaty (PCT) national phase applications.
According to the BPTO, Brazil’s entry into the program will increase the number of partner offices from 23 to 35, expanding the range of Offices of Earlier Examination (OEE) eligible for accelerated examination. The participating offices include the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), Canadian Intellectual Property Office (CIPO), among leading offices.
Future of the PPH: Expanding Opportunities
It is expected that the current limitations mentioned above will be reviewed in the coming years. Consequently, applications filed in any country, even those not with a partner office, could potentially participate in the program and have their examination prioritized in Brazil, provided that the merit examination by any participating GPPH office identifies patentable subject matter. Moreover, the next cycle of the PPH acceleration program in 2025 is expected to remove the weekly limits on requests per applicant, thereby simplifying the PPH application process for large portfolios.
It is worth noting that the new rules based on the GPPH and possibly the points mentioned above will only come into effect after the publication of a new ordinance, the publication date for which has not yet been released by the BPTO.
A Significant Advancement for Brazil’s IP Landscape
The adoption of the GPPH by the BPTO represents a significant advancement for the prioritized processing of patent applications in Brazil. This step could eliminate some of the main limitations of the current program, facilitating access to prioritized examination, for example, for companies and inventors with a large number of patent applications in their portfolio. With these improvements, an increase in the number of PPH requests is expected, as well as potentially making the country more attractive on the global intellectual property stage.
