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Japan-Brazil PPH to Become Available in All Technical Fields

November 25, 2019

The Japan Patent Office (JPO) and the National Institute of Industrial Property of Brazil (INPI) have been operating the Patent Prosecution Highway (PPH) between them, targeting limited technical fields. However, the two sides decided that from December 1, 2019, this limitation will be eliminated to make applicants available for all technical fields under the JPO-INPI PPH on a pilot basis.

1. Background

Brazil, a country boasting the largest economic scale and population in South America, has recently achieved dramatic economic development with many companies developing business mainly in the automobile and other manufacturing industries. Meanwhile, the INPI is facing a serious problem with delays in patent examination procedures: spending 10 years or less on average from receiving an application to issuing a notice of the first examination results.

In light of this situation, on April 1, 2017, the JPO and the INPI started the PPH pilot program (*1) in the field of IT and that of mechanical engineering, mainly automobile-related technologies.

Following this, on April 1, 2019, the offices expanded the PPH target fields to certain technical fields, e.g., macromolecular chemistry (*2). However, certain industries have demanded the elimination of the limitation of technical fields since about a half of all applications are in these certain fields, including medicines, and are still excluded from the coverage of the PPH.

*1: The PPH program enables an applicant whose application has been determined to be patentable by the Office of First Filing (OFF) to undergo an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon request from the applicant on the basis of bilateral office agreements.

*2: Expansion of the Patent Prosecution Highway between Japan and Brazil (press release on January 16, 2019)

2. PPH between the JPO and the INPI (for two years from December 1, 2019)

For two years from December 1, 2019, the JPO and the INPI will conduct a PPH pilot program under which the limitation of technical fields is eliminated.

Characteristics of the new JPO-INPI PPH pilot program from December 1, 2019, are as follows:

  1. Technical fields of applications eligible for PPH requests
    The JPO and the INPI will accept PPH requests for applications in all technical fields without imposing any limitation.

  2. Duration of the PPH pilot program
    For two years from December 1, 2019

  3. Upper limit of PPH requests in number
    The INPI will accept up to 400 PPH requests per year. This upper limit is the total number of PPH requests that the INPI has accepted from all offices filed under PPH programs that the INPI has concluded with these offices.

  4. Number of PPH requests per applicant
    The INPI will accept up to one request per applicant per month as the Office of Second Filing (OSF), which is the same condition as in the past. Meanwhile, the JPO will set no limitation to the number of PPH requests per applicant that it accepts as the OSF.

3. Advantages of the JPO-INPI PPH for applicants

If applicants file applications with the INPI under the PPH program, the INPI will examine such applications in an accelerated manner compared to those filed under the normal procedures. In particular, if applicants file applications with the INPI, facing a problem of delays in patent examination procedures, under the PPH program, they will be able to smoothly acquire their patent rights in Brazil (*3).

*3: According to the INPI website, the office has been issuing a notice of the final examination result within one year from the filing date of an application filed with a request for the PPH.

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