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BRPTO Filing RequirementsIf the following documents are not provided upon filing and
if not indicated otherwise, they must be submitted as per terms below, calculated from the filing date in Brazil.
*Deadline to Enter the Brazilian National Phase: Despite important modifications made into the PCT Treaty in 1984 and 2001, Brazilian Executive Order #81,742 – the Executive Order enacting the PCT – has never been amended. Under said Executive Order, applicant has a 20-month term from the priority date to enter the national phase. In addition, if applicant filed a demand for an international preliminary examination within 19 months from the priority date (Chapter I of the PCT), the national phase entry deadline is extended to 25 months (Article 39). On that account, although the BRPTO currently accepts entries within 30 months from the priority filing date, we recommend our clients to file their applications within the 20-month term stablished in the Executive Order #81,742.
**Priority translation remarks: According to section 16, ¶2 of the Brazilian IP Statute and the current interpretation of the statute sustained by the Brazilian PTO, the priority document must be accompanied of a simple translation of the filing certificate or equivalent document containing data identifying the application. However, according to ¶5 of §16 of the Brazilian IP Statute, when source document contains the Brazilian-filed application in its entirety, “a declaration made by applicant in this respect will make up for simple translation.” Because the “simple translation” phrase in paragraph 5 is not clear, as it may refer to the filing certificate or to the entire priority document, including the specification, we recommend our clients to provide a translation of the priority document when it not fully contained in the Brazilian application.
DOCUMENTBR APPLICATION
(UNDER PARIS CONVENTION)PCT NATIONAL PHASE*
Specification in Portuguese
30 days from BRPTO Office Action 60 days
Claims in Portuguese Must be submitted together with the filing Must be submitted upon filing
Abstract in Portuguese 30 days from BRPTO Office Action Must be submitted upon filing
Drawings in Portuguese 30 days from BRPTO Office Action 60 days
Certified copy of the priority document 180 days
60 days
If the copy is available at the WIPO’s database, a simple copy will fulfill
this requirement
Translation of the priority filing certificate 180 days 60 days
Translation of the priority document* 180 days** 60 days**
Assignment document 180 days 60 days
POA 60 days 60 days
Is issuance fee paid?
Art. 36 ¶1
Filing and numbering of patent application
Art. 20 Art. 22, 23
Application filed / entered BRPCT national phase
Publication of the Application
Substantive patent examination
Preliminary formalities review
Application comply with Art. 19 (for PCTs, with Art. 6 and 5
of the Resolution 77) and Art. 216?
Art. 20
Was the application corrected?
Early publicationArt. 30 ¶1
Request for substantive patent examination?
YES
Pharmaceutical product or process?
NO
Art. 30
Are there elements that could be components of the Brazilian genetic heritage or
associated to traditional knowledge?
NO
Office action requesting documents
Art. 34
Notice of allowance
NO
Art. 7
60 days
YES
Office action requesting compliance with Art. 19
For PCTs, BR application withdrawn
Art. 21
Art. 6
60 days
YES
Was the application corrected?
YES
30 daysApplication not accepted
NO
NO
Up to 36 months from filing date
Request for priority examinationAccepted?
YES
Priority patent examination
NORequest denied
Regular patent examination
Art. 31 Third party prior art submission from publication up to the end of the examination
YES
Failed to comply CompliedDismissed
Appeal
Accepted?Definitively dismissed
YES
NO
Art. 212
60 days
YESReplied Not replied
Definitely dismissed
Non-final office action90 days
Art. 36 ¶2
Complied
Art. 37
Was the acess authorization or negative declaration
of access presented?
Art. 38
Non-final office action - rejection90 days
No reply was filedFilling of reply to comply with requirements or response for negative technical opinion
Art. 36 ¶2
Accepted?YES
Final office actionrejection
Art. 37
NO
Appeal to the Commissioner of the PTO
60 days
Art. 212
Counterarguments by interested parties
Art. 213
YES
Interest in a national defense area (only BR originated requests)
PTO fowards the application to the agency in charge of analyzing the existence of national
security issues related to the technology
Art. 75
Appeal
Accepted?YES
For PCTs, dismissed
NO
60 days
Art. 31
Art. 31
Submission of Power of Attorney with powers to
receive summons
Definitely dismissed
NOArt. 261 ¶2
60 days
Art. 1612 months (Paris Convention)
30/25/20 months (PCT)
18 months from filing date of the earliest priority
Application is dismissed
NO
60 days
Was the reinstatement requested?
Art. 33
Art. 33
YES
NO
YES
Application waits BRPTO’s review of ANVISA denial* Reject application back to the BRPTO
BR National Gazette publishes prior approval
Application is prosecuted under seal
Approved application back to the BRPTO
NO
Art. 36 ¶2
Appeal
Accepted?
60 days
NO
YES
Art. 212
1
Post-grant review accepted
Nullity of the Patent
Decision
Art. 54
Patent upheld
6.7
2
2.1
2.2
2.3
2.5
Appeal
Accepted?
2.7
2.8
2.6
2.9
3
4
4.1
5
6
5.10
5.4
5.5
5.6
5.7
5.8
5.9
7
7.28
7.29
7.30
7.9
7.10
Failed to comply7.11
7.12
7.13
8
8.1
9.5
9.69.9 9.7
7.317.327.33
7.34
7.35
7.367.15
7.14
7.16
7.18
7.19
7.21
Priority
Proof of priority and transfer of rightsRestoration of priority rightsYES
NO
Loss of priority
Art. 16 ¶3 Art. 16 ¶4 and 6
Art. 16 ¶7Art. 29
Appeal Accepted?
Art. 212 Art. 30
60 daysNO YES
60 days(PCT)
Loss of priority
7.1
7.2
7.3 7.4 7.5
7.7
7.6
3.1 3.2
3.3
5.1
5.2
6.126.13
6.8
2.10
2.12
2.112.13
2.14
Art. 22
PARTIALLY COMPLIED
YES
Patent upheld in an ammended
form
9.8
PARTIALLY
YES
Last chance for amendment of claim chart (Art. 32)
NO
A
A
180 days (CUP)
BRPO publishes appeal notification so interested
parties can submit arguments
BRFDA prior approval6.2
BRFDA receive application for prior approval examination under Art. 229-C
Art. 229-c6.1
BRFDA opinion6.3
YES
90 daysArt. 5
Appeal not filed
Appeal
Accepted?
60 daysBR National Gazette publishes non prior approval
6.9NO
Reply
Accepted?YES
Not replied
YES
NO
*
7.17
Definitely dismissed
YES
5.3
NO
60 days
Office action requesting compliance with Art. 5
2.4
7.8
6.4
6.5
6.6
6.10
6.11
7.20
© 2016Reproduction is not allowed
Patentprosecution workflow
Notice of allowance, grant or issuances
Intermediate steps
Abandonment, dismissal, or nullity
Attention required
Main steps
Post-grant review
Confidential Step - Information Exchanged between the BRFDA and Applicant
Art. 38 ¶1
YES
Definitely dismissed
NO60 days + 30 days
Art. 38 ¶2
Rejection reaffirmed
Comissioner ruled in favor of the applicant?
Any office action?
YES
NO
60 days
Art. 214
NO Replied7.26
7.22
7.237.247.25
Patentee and challengercomment on technical opinion
Examination/Technical opinion
60 days Patentee’sreply
Filing of post-grant review by the BRPTO or an interested party Grant and issuance60 days 6 months
Art. 51Art. 52Art. 53 Art. 3999.19.29.39.4
*
*
***
Articles of Statute 9.279/96 Articles of Resolution 68Articles of Resolution 77Articles of Resolution 80Articles of Resolution 131Articles of RDC 23/2008
FEDERAL STATUTE AND BRPTO RESOLUTIONS
If filed within 60 days from grant, effects of the registration will be suspended.
for further information see the fast-track workflow.
for further information on the term for entering the national phase in Brazil, please contact us at [email protected].
*
**
***
Sao Paulo Rua George Ohm, 230 - A/112 04576-020 Brazil T + 55 11 3033 3700 | F + 55 11 3033 3715 | [email protected]
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Rio de Janeiro Rua da Assembleia, 10/4108 20011-901 Brazil T + 55 21 3550 3700 | F + 55 21 3550 3777 | [email protected]
We are a Brazilian top tier, recognized as a successful law fi rm handling large and strategic Intellectual Property, Life Sciences, Food & Drug, Regulatory, Internet Law, Data Privacy and Cyber Crime projects in the country. Over the last 20 years, our attorneys have handled complex patent prosecution, litigation, policy making and regulatory matters, representing and giving advice to companies seeking to protect blockbusters and strategic interests in Brazil.
Our fi rm has the largest patent litigation practice and can offer the complete range of services involving the acquisition, procurement, prosecution, enforcement and licensing of Intellectual Property rights in Brazil. In addition, we have extensive expertise in industries like Telecommunications, Oil & Gas and the Auto Industry. We have been growing steadily, while expanding into areas of practice closely associated with our core capabilities.
Our success rate stands above competitors’ and we are involved in the most signifi cant lawsuits in Brazil. We are the most proactive fi rm assisting clients to successfully expedite patent examination before the Brazilian Patent and Trademark Offi ce.
With offi ces in Rio de Janeiro, Sao Paulo, Porto Alegre and Tokyo, we offer a comprehensive range of legal services. While aggressively investing in technical and human resources to provide a unique blend of technical and legal expertise, our fi rm has a number of foreign-trained attorneys and partners and a motivated multi-lingual team with the background and capabilities to advise companies of all sizes from across the globe. Our client portfolio includes Fortune 500 companies as well as several global companies.
Request for priority examination
Fast Track possibilities
PRELIMINARY PATENTABILITY OPINION (RULE 123/2013) - The preliminary patentability opinion program is available for applications having BR priority. The BRPTO will provide the applicant a prior art search report and a preliminary technical report, similar to ISR and WOISA. However, said program does not change the application analysis during the BRPTO’s examination.
Request for priority
examination
PPH-Application filed aft er January 1st, 2013, claming BR or US
priority in the field oil and gas
Pharmaceutical produt or process or equipaments related
to Public Health?
Application claiming BR priority and also filed abroad
NO
Eligible for Fast-Track?
Long delay...
Substantive Patent
Examination
Can be requestedBy applicant:
• When applicant is 60 years old or older;• When applicant suff ers from functional or mental disabilities or other severe diseases; • In order to obtain funds or credits from Brazilian fostering or credit agencies;• When third parties are using or working the subject-matter of a pending patent application.
By third parties:
• Applications dealing with subject matter declared relevant for national emergency or public interest;• Application claiming the same subject matter of the thind party’s patent or application; • When using, exploring or working the subject-matter of a pending patent application;• When charged by the applicant of reproducing the patent application object without authorization.
NO
NORule 153/2015
Rule 154/2015
Rule 151/2015
Rule 80/2013
Program temporarily closed on February 2016. Please let us know if you have interest to apply for it,
so we can keep you posted.
Program temporarily closed on April 2016. Please let us know
if you have interest to apply for it so we can keep you posted.
Green Patents - applications related to eco-friendly and
green technologies
NO
YES
NO
Rule 131/2014
YES
YES
YES
YES
YES
7
5.11
5.12
5.13
5.15
5.16
5.4
Application filed by a BR sole trader or a BR small-sized company, as defined
by Supplementary Statute #123
Rule #160/20165.14
NO
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For immediate assistance with application fi lings or additional information please contact us at: [email protected]
AWARDS
ABBR
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ORG
ANIZ
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OF
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, 201
6
Current as of June, 2016
Patent Prosecution Workfl ow in BrazilAbbreviated Organizational Chart of the Brazilian Patent and Trademark Offi ce
