News

A new phase of the PPH program
Author: Tainara Barbosa
On December 10, 2024, the Brazilian PTO published Ordinance No. 48/2024, which revokes Ordinance No. 78/2022, previously responsible for defining the requirements and limitations for requestions, the priority prosecution based on PPH bilateral agreements.
The new Ordinance establishes guidelines to apply for the GPPH (Global Patent Prosecution Highway), besides the PPH (Patent Prosecution Highway). This is due to the fact that on July 6, 2024, Brazil adhered to the GPPH.
PPH and GPPH
The PPH is the program by which there were several bilateral agreements, based on the examination process that already took place in a Partner Office. On the other hand, the Global PPH (GPPH) represents a multilateral agreement, to which 35 Intellectual Property Offices worldwide are signees. This represents an increase in the amount of IP office partners to the BPTO, which when based only on the PPH, was 23.
Specifically, the GPPH is an international initiative coordinated by the Japan Patent Office that seeks to make the patent granting process between different countries more agile. Through this system, participating Intellectual Property Offices share information and examination results, allowing for prioritization of proceedings and reducing time and costs associated with the patent process across multiple jurisdictions.
According to the GPPH, the Office of Earlier Examination (OEE) conducts the initial search and examination, and its positive results can be used as a basis for requesting priority prosecution in any other participating office (OLE).
Main differences between the previous and new Ordinances
First, bringing to light the new aspects of these new Guidelines, it is possible to highlight new main definitions. An example being “Partner Office”, which represents an office participating in an agreement with the BPTO or signee to the GPPH.
Other new definitions are “Sufficiently corresponding claims” and “More Restricted Claims”. The first one refers to claims of the patent application filed at the BPTO which, after considering differences in translation and formatting, have the same, similar, or narrower scope than the claims considered patentable/admissible by the Office. The More Restricted Claim refers to a claim submitted to the BPTO which, in relation to the claims considered patentable/admissible by the Office of Prior Examination, is limited by some additional technical feature supported in the Specification and/or in the Set of Claims.
Requirements that should be met to be able to have priority prosecution accepted
Article 3 of Ordinance No. 48/2024 presents the requirements, which are similar to the ones established in the previous Ordinance. They can be summarized as: not being within the secrecy period, having already been published; having the examination already requested; not having any other type of priority prosecution in progress; not having started the technical examination; having a corresponding patent application; having subject matter considered patentable/admissible; and having have sufficiently corresponding claims.
Limitations
The PPH Project establishes specific operational limits and timeframes, with applications being accepted starting from January 1, 2025. The project sets a maximum limit of 1,000 applications per section of the International Patent Classification (IPC) annually while maintaining an overall amount of 3,200 applications per annual cycle. The project will continue until all admitted priority patent cases at BPTO complete their administrative process.
These quantitative restrictions apply regardless of whether the priority prosecution requests are accepted or whether the Previous Examination Office’s results are approved. The system operates on a first-come, first-served basis, with vacancies being filled according to the chronological order of priority processing requests.
The annual cycle for these limitations is strictly defined, running from the first to the last day of each calendar year, with no possibility of extension. This structured approach ensures systematic and organized prosecution of patent applications within the PPH Project.
In this section on Limitations, it is possible to see important differences between this phase of the PPH Project and the last one.
In the previous PPH project phase, the limit was 800 requests per annual cycle; the change to 3,200 requests per cycle represents a 400% increase. However, it should be noted that this limit is divided on quarterly basis. As a result, on January 1st, 2025, the first 800 vacancies will become available, with subsequent vacancies opening onon April 1st, 2025, July 1st, 2025, and October 1st, 2025.
It is important to note that this is not the only limit that has increased; the IPC classification has also increased at the same rate. However, on December 26, 2024, the INPI established a limit on the number of PPH requests for the first trimester directed to patent applications under the IPC classification H04, due to the current amount of requests in the examination queue.
Moreover, the limitations for using PCT results were withdrawn, together with the weekly limitation of one request per Applicant, which is no longer present in the new Ordinance.
Implementation and Expectations
The implementation of the GPPH system in Brazil, along with the new Ordinance No. 48/2024, represents a significant advancement in the country’s patent prosecution system. The expansion from bilateral PPH agreements to the multilateral GPPH increases Brazil’s partnerships from 23 to 35 Intellectual Property Offices worldwide. The new guidelines also demonstrate substantial improvements in operational capacity, with a fourfold increase in annual application limits (from 800 to 3,200) and the removal of several previous restrictions, such as PCT result limitations and weekly applicant quotas.
These changes, when viewed in conjunction with clearer definitions of key terms and maintained quality requirements, indicate Brazil’s progression towards a more efficient, globally integrated, and accessible patent examination system. However, it is essential to maintain the highest standards of quality and to ensure the capacity to thoroughly analyse requests. It is also important to highlight that the new Ordinance will be valid and in force starting on January 1st, 2025.
For more information on this topic or if you have an interest in applying for a PPH, please contact us via email: international@simoes-ip.com