January 16, 2019
On April 1, 2019, the Japan Patent Office (JPO) and the National Institute of Industrial Property of Brazil (INPI) will expand the Patent Prosecution Highway (PPH) between the two Offices to more technical fields.
Brazil, boasting the largest economy and population in South America, has recently been achieving dramatic economic development and attracting many manufacturers including automobile companies. Meanwhile, the INPI has been facing a serious problem with delays in patent examinations, spending over 10 years on average from receiving an application to issuing a notice of the first examination results.
Given this situation, the JPO started a pilot program of the Patent Prosecution Highway (PPH)*1 with the INPI on April 1, 2017 to allow companies that have obtained Japanese patents to obtain Brazilian patents in a shorter time. According to the INPI’s website, the INPI issues notices of final examination results within one year after filing in the case of PPH requests.
However, the technical fields of applications eligible for PPH requests to the INPI have been limited to the fields of IT technologies and mechanical engineering such as automobile-related technologies, and companies have expressed interest in the PPH’s expansion to more fields including chemical engineering.
*1 A patent prosecution framework in which the Office of Second Filing (OSF) examines applications determined to be patentable by the Office of First Filing (OFF) in an accelerated manner upon request from applicants.
2. PPH between JPO and INPI from April 1, 2019
The JPO and the INPI have agreed to renew their PPH pilot program on April 1, 2019 for two years, newly accepting applications in some areas of chemical and biotechnology engineering. This addition of technical fields means that the percentage of applications eligible for PPH requests of the total applications filed with the INPI from Japan will increase from approximately 33% to 56%.
The new pilot program starting on April 1, 2019 has the following features:
- Technical fields of applications eligible for PPH requests
The INPI will newly accept PPH requests for applications in technical fields including macromolecular chemistry, metallurgy and materials, agrochemicals, microorganisms, and enzymes, in addition to IT technologies and mechanical engineering such as automobile-related technologies which were previously approved in the pilot program. The JPO will accept PPH requests for applications in all technical fields:
- Duration of the new PPH pilot program
Two years from April 1, 2019 or until both Offices accept 200 requests in total, whichever is earlier.
- Number of PPH requests per applicant
The ceiling set by the INPI will be changed to limit the requests to one request per applicant per month (from six per applicant per four months in the previous pilot program). No ceiling will be imposed in the last one month of the program, (or March 2021 if the program continues for the full 2 years). The JPO will not set a ceiling per applicant.
3. Advantages of JPO-INPI PPH for applicants
Since the INPI will examine PPH applications (applications for which PPH requests are made) in an accelerated manner in comparison to normal applications, applicants can obtain patents in a shorter time in Brazil where delays in patent examination are serious, and smoothly develop their business in the country.
Division in Charge
Examination Policy Planning Office, Administrative Affairs Division, JPO