National Phase of PCT Patent Applications (Time Limits)

According to amendments made to the Patent Cooperation Treaty (PCT), enacted on April 1, 2002, applicants no longer need to request the preliminary examination of PCT Patent Applications within a 19-month period, by filing a DEMAND, in order to be authorized to enter the national phase within 30 months from the earliest priority date (if priority is claimed). Several countries have adhered to the amendments but others have lodged notifications at WIPO concerning incompatibility with their respective national laws. Brazil is a country which has officially filed such a notification, alleging that national law would not allow the automatic applicability of the amendments to the Treaty, by which the time limits to enter the Brazilian national phase continue to be 20 or 30 months from the earliest priority date. In order to use the 30-month time limit in Brazil, it is still necessary to file a DEMAND with the appropriate international authorities within 19 months from priority (if claimed). If an applicant wishes to save expenses by not filing the DEMAND by the prescribed deadline, then the Brazilian phase of the respective PCT Application must be initiated before expiration of 20 months from the earliest priority date (Chapter I of the Treaty). Unless Brazil removes its notification at WIPO, applicants should heed carefully the applicable time limits for entering the Brazilian phase of their PCT application in order not to lose the rights on their inventions in Brazil. However, the changes reflect favorably for applicants residing in Brazil since the expense inherent in filing the DEMAND no longer exists, and a longer time limit (30 months) is guaranteed for entry of corresponding patent applications abroad.

On the other hand, several Brazilian attorneys and the Brazilian Intellectual Property Association (ABPI) maintain a position completely contrary to that officially adopted by the Brazilian Government. According to a resolution laid down by ABPI in its August national Seminar, the Brazilian Constitution does not require a new legislative procedure for the incorporation of the new time limit of PCT Art. 22, and thus this amendment could be immediately implemented by means of a simple alteration of the Patent Office’s regulations. There is no incompatibility between the amendments to the PCT and national law, and there is no reason not to apply and immediately accept the amendments. This position and resolution have already been communicated to the president of the Brazilian Patent and Trademark Office, and some other governmental authorities, in an attempt to compel the Government to remove the official notification at WIPO, and thus to adopt the consequent applicability of the 30 month deadline without the necessity for filing the DEMAND. Obviously, the time limits of 20 or 30 months are still applicable in Brazil, as in the past, until the withdrawal of the reservation is made. If, for any reason, a time limit for entering the Brazilian phase is missed, or the 30-month deadline is erroneously applied to Brazil, it is recommended that a Brazilian attorney be contacted immediately to determine if there is any other route available to cover the invention in question.

Full information regarding the countries which have filed notifications at WIPO, as well as recommendations about the subject, is available on the WIPO website (https://www.wipo.int), https://www.wipo.int/pct/en, Section "Activities and Services"; item – PCT System. Any news about the possible withdrawal (if any) of the Brazilian notification at WIPO, as well as full applicability of the amendments, will probably be available on the WIPO website at the appropriate time. We will also keep our clients informed.