Brazil: Fast-Track routes for patent applications

  • 03 July 2019
  • New legislation

Starting to accomplish the promised measures to harmonize its internal procedures in an attempt to increase productivity, Brazilian PTO (BRPTO) published, on June 17, Resolution n° 239 consolidating all the available fast-track routes for patent prosecution, with exception of PPH pilot programs, which have their own Resolutions and timeframes.

In practical terms, Resolution n°239 does not bring a lot of news, being focused on consolidating and harmonizing the already existent routes and facilitating the comprehension of all requirements to participate in the same.  Although said harmonization has simplified some of the requirements to participate in a fast-track route, such as the case of Green patents that no longer require that an application contains a maximum number of claims, in the end of the day, the available fast-track routes are still the same, namely:

(i)           the subject matter of the patent application is being reproduced by an unauthorized third-party;

(ii)          the patent application covers a “green” invention;

(iii)         the patent application relates to the diagnosis, prophylaxis or treatment of AIDS, cancer, neglected and rare diseases;

(iv)         the applicant is a microentrepreneur, a microenterprise or a small business (national)

(v)          the application filed before BRPTO or using BRPTO as PCT Receiving Office (RO/BR) is the first of a family of applications later pursued in foreign countries

(vi)         other situations:

  1.          the grant of the patent is a condition for obtaining financial resources from official credit institutions;
  2. the applicant (not the inventor) is an individual over sixty (60) years old or presenting critical illness or presenting physical or mental disability;

We draw your attention to route (i), since it is a “decision making” aspect for companies that are still evaluating if Brazil is a good option for patent prosecution considering BRPTO’s backlog. In other words, if a company is concerned on investing in patents in Brazil due to the uncertainty caused by the backlog, the company should have in mind that in case of a potential infringement, the application may be evaluated earlier aiming to increase the level of legal certainty.

Finally, another important aspect to remind is that the term of protection of a patent in Brazil is the longer than twenty (20) years counted from the filing date or ten (10) years counted from the granting date. That is, a minimum of ten (10) years from the granting date is guaranteed by our current IP Law. So, it is important to take this possibility in mind before opting to request the acceleration of the examination. For example, despite of the fact that we have an available fast-track for diagnosis, prophylaxis or treatment of AIDS, cancer, neglected and rare diseases, as discussed above, the Applicant shall evaluate if the product may have a long shelf life (and then could potentially benefit from BRPTO backlog) before taking the decision of using said route.

We remain at your entire disposal for discussions on specific cases/routes. Please contact us at brj@clarkemodet.com.br

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