IDS hosts a discussion on mechanisms for prioritized examination of patent applications in Brazil, including the Patent Prosecution Highway

IDS hosts a discussion on mechanisms for prioritized examination of patent applications in Brazil, including the Patent Prosecution Highway

On March 31, the Dannemann Siemsen Institute (IDS) held another edition of Agenda IDS, dedicated to discussing the main mechanisms for accelerating the examination of patent applications available before the Brazilian Patent and Trademark Office (BPTO), with a focus on the Patent Prosecution Highway (PPH) and strategic perspectives for domestic and foreign applicants.

The event was opened by Patrícia Porto, Academic Coordinator of IDS, moderated by Maurício Desidério, partner at Dannemann Siemsen, and featured presentations by Maria Malburg, also a partner at the firm, and Diego Musskopf, Researcher and General Coordinator of Governance at the BPTO’s Patent Directorate.

Maria Malburg opened the discussion with a historical overview of the evolution of prioritized examination in Brazil. She noted that the BPTO backlog had, at certain points, exceeded ten years in specific technological fields. As a response to this scenario, the first acceleration initiatives were introduced in 2006, including measures aimed at cases of public interest. In 2015, the PPH was implemented, and in 2019, procedures were standardized—marking a milestone that consolidated prioritized examination as a strategic tool in the management of intellectual property assets.

Diego Musskopf then presented the technical and institutional overview of the prioritized examination programs currently in force at the Brazilian Patent and Trademark Office (BPTO). He emphasized that patent applications falling within one of the prioritization categories remain subject to all legal requirements of novelty, inventive step, and industrial applicability, but receive chronological priority in examination through a system marker, ensuring preferential processing at all stages.

Musskopf detailed the categories of available modalities, including those based on international cooperation agreements. Within this category, the PPH is particularly noteworthy. Its central requirement is the submission of a positive patentability opinion issued by one of the BPTO’s partner offices. Recent data indicate that the average time to a decision for applications processed under the PPH, calculated from the request for examination, is approximately seven months, with grant rates close to 90%, in contrast to the approximately 54% observed under ordinary examination. Part of this performance, he explained, derives from the operational efficiency of the mechanism, whereby 44.1% of PPH decisions are issued in the first Office Action, as the Brazilian examiner leverages the examination results already conducted by a foreign partner office.

Maria Malburg complemented the analysis with strategic recommendations. For cases involving divergences in claim scope between offices, she highlighted the use of divisional applications, allowing for the accelerated grant of undisputed claims while more complex matters proceed separately. She also observed that, among the most strategic modalities for domestic applicants, “Green Patents” stand out, consisting of applications drafted to emphasize the environmental benefits of the invention, as well as the fast-track program for elderly inventors and small enterprises.

Finally, the BPTO’s data intelligence dashboard was presented, a public tool that enables weekly monitoring of statistics related to priority examination of patents, including average decision times, grant rates, and distribution by modality.

The recording of the event will be made available shortly on the IDS website.

The dashboard with data on priority patent applications can be accessed at: General Statistics — National Institute of Industrial Property

The partner offices under PPH agreements can be accessed at: Acordos PPH assinados pelo INPI — Instituto Nacional da Propriedade Industrial

Note: For quick release, this English version is provided by automated translation without human review.