Four Brazilian Patent Prosecution Particularities You Should Know

The rules and regulations on IP have a certain international uniformity. It is true that in several countries the main patentability requirements are almost the same due to international agreements such as the TRIPS Agreement. However, even though there is great similarity between the main patentability requirements, each country has its own specific rules, which can be very different compared to those of the rest of the world.

In this context, Brazil also has its own regulations, which may cause some confusion, especially to practitioners and applicants that are more used to working on the US patent system. Therefore, this article will focus on clarifying and briefly explaining some frequently problematic and other advantageous points of Brazilian practice.

Expedited examination

The Brazilian Patent and Trademark Office (INPI) has been struggling for a long time with a backlog. There are a lot of patent applications waiting to be examined and the INPI claims that it does not have enough examiners or resources to be able to overcome the backlog in a short time. Currently, a patent application can take around seven to ten years (on average) to be granted.

As a way to minimise the backlog of some technical areas, the INPI has launched several examination acceleration programmes, which include:

A patent prosecution highway (PPH) between the US Patent and Trademark Office (USPTO) and the INPI: restricted to oil and gas-related applications; PPH between the Japan Patent Office (JPO) and the INPI: restricted to IT-related applications; Green patents programme: for patent applications that refer to environmentally friendly inventions; Health products programme: for patent applications related to products, pharmaceutical process, equipment and materials related to public health; Small companies programme: for patent applications filed by Brazilian small companies; Potential infringement: for situations in which a third party is using the invention recited on the application; and Elder applicant: for applicants who are 60 years or above. It is important to note that the PPH programmes (USPTO and JPO) are still in the pilot phase and apply only to specific technical areas. The INPI-JPO pilot programme applies only to patent applications that refer to IT. The INPI-USPTO agreement applies only to patent applications that cover oil and gas. In addition to these requirements related to the technical area, both PPH programmes still require that the patent...