PPH program in Brazil (Patents)

Update regarding examination of transgenic plant inventions, compulsory licensing of patents and phase III of the PPH program in Brazil

We would like to briefly summarize the recent developments on the above-mentioned matters as follows:

(I) Examination of patent applications related to transgenic plant inventions has been suspended by the BR Patent Office pending reconsideration of the Technical Note No. 1/2022 stating the internal guidelines to be followed by the patent examiners.

As a result of the lack of clear guidance for assessing patentability of this kind of inventions and following an open public consultation during which suggestions have been submitted by interested parties, a new Technical Note including revised guidelines for examination is expected to be issued by the BRPO within short, at which time examination of applications will be resumed.

(II) The Brazilian National Congress has recently decided to maintain the partial vetoes by the Brazilian President to the Law No. 14,200/2021 amending the Art. 71 of Brazilian Industrial Property Law concerning Compulsory Licenses.
Accordingly, in the case of compulsory licensing the patent owner will not be required to share information, biological material, data and documents relevant for the manufacture of the patent product. Likewise, compulsory licenses may not be granted by law. Finally, consideration of the public emergency declared due to COVID-19 as a public health emergency for the purposes of compulsory licensing has been disregarded (indeed the Ministry of Health had previously declared the end of the COVID-19 public emergency).

(III) In accordance with the phase III of the Patent Prosecution Highway (PPH) Pilot Program currently applicable in Brazil, up to 800 hundred requests for prosecution under PPH are to be accepted by the BR Patent Office during 2022. In this sense, the limit of 150 cases for applications under section H of the International Patent Classification (comprising among others electrical and telecommunication inventions) has already been reached.

PPH requests for inventions of other sections of the IPC are still suitable but it should be taken into account by interested applicants that the corresponding limit of 150 cases for the other sections of the IPC may be reached at any time.

Should you have any questions, please feel free to contact us. We will be glad to help you with this matter.