On this page
- CIPO-INPI Brazil Agreement Introduction
- Procedures for filing a request to CIPO for accelerated examination under the PPH
- Annex A: Requirements for requesting accelerated examination under the CIPO-INPI PPH
- Annex B: Documents Required for Participation in the CIPO-INPI-Brazil PPH
- Annex C: Principles
- Annex D: Pertinent Dossier Access Systems
- Annex E: Eligible Work Products
- Annex F: Examples of Canadian patent applications that may request accelerated examination under the CIPO-INPI PPH
CIPO-INPI Brazil Agreement Introduction
The Pilot Agreement on the Patent Prosecution Highway (PPH) between the Canadian Intellectual Property Office (CIPO) and the Brazil Instituto Nacional da Propriedade Industrial (INPI-Brazil) came into force on . The requirements and procedures set out below will apply to requests to participate under the PPH filed with CIPO on or after .
CIPO reserves the right to limit or terminate our participation in the CIPO-INPI Brazil PPH agreement at any stage if the volume of participation exceeds a manageable level, or for any other reason. In the event the CIPO-INPI Brazil PPH agreement is terminated CIPO will provide written notice not less than one month prior to the date of termination.
These requirements and procedures may be amended at any time with the consent of all offices involved. CIPO and INPI-Brazil may, if they wish, develop office-specific guidelines, e.g. to reflect their respective legal terminology and processes, and can apply additional flexibility beyond these requirements as they see fit.
Illustrated examples of Canadian patent applications that may request accelerated examination under the CIPO-INPI-Brazil PPH are given in Annex F.
Procedures for filing a request to CIPO for accelerated examination under the PPH
An applicant should file a request for accelerated examination under the Patent Prosecution Highway (PPH) to CIPO by submitting a completed PPH request form and providing the documents required for participation in the CIPO-INPI PPH as noted below in Annex B.
The request for accelerated examination under the PPH may be made by mail, fax, or electronically via the Innovation, Science and Economic Development Canada website as per the CIPO patent correspondence procedures. The PPH request form must be the uppermost document to ensure that the request is correctly processed. The PPH request form is available in https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/expedited-examination-submit-patent-prosecution-highway-request for the respective agreement.
All subsequent correspondence with the office must be clearly identified as relating to a PPH application to ensure that the correspondence is correctly processed. Please prominently mark each page of the covering letter in subsequent correspondence with the term "PPH".
The PPH request will be considered by an Examiner, and, if all requirements are met, the Examiner will conduct the accelerated examination. Each Canadian patent application will be examined in accordance with the Canadian Patent Act and Patent Rules, and CIPO's Patent Office Practice.
If the Examiner determines that the claims on file do not sufficiently correspond to one or more of those claims indicated as allowable by INPI-Brazil, the applicant will be notified that the request for accelerated examination is not granted. To re-enter the PPH, the applicant must amend the claims accordingly and reapply altogether by submitting a new request form.
At any time during the prosecution of a PPH application, if the Examiner determines that the claims on file do not sufficiently correspond to one or more of those claims indicated as allowable by INPI-Brazil, the applicant will be notified that the application has been removed from the PPH and examination will proceed in a non-accelerated manner.
All amendments to the claims made with the request for accelerated examination under the PPH will be entered regardless of whether the request is granted or not.
Annex A: Requirements for requesting accelerated examination under the CIPO-INPI PPH
In order to be eligible to participate in the CIPO-INPI PPH the following six requirements must be met:
- The applications before CIPO and INPI-Brazil have the same earliest date (which may be the priority or filing date);
- The corresponding application(s) must have been substantively examined, including consideration of novelty and inventive step and has/have at least one claim indicated by INPI-Brazil in its capacity as a national Office to be patentable/allowable. The claim(s) determined as novel, inventive and industrially applicable by INPI-Brazil as the ISA and/or IPEA has/have the meaning of patentable/allowable for the purposes of this notice;
- All claims presented for examination at CIPO must sufficiently correspond to one or more of the claims found patentable/allowable by INPI-Brazil. Annex C provides further guidance of the criteria for evaluating whether the claims sufficiently correspond;
- Substantive examination of the CIPO application for which participation in the PPH is requested has not begun. Substantive examination is considered to have begun when CIPO issues a first office action;
- The CIPO application is open to public inspection or a request to open the application to public inspection accompanies the PPH request; and,
- A request for examination and the associated fees must have been filed at CIPO, either at the time of the PPH request or previously.
Annex B: Documents Required for Participation in the CIPO-INPI-Brazil PPH
For participation in the CIPO-INPI-Brazil PPH at CIPO the applicant is required to:
- File a complete request for participation in the PPH.
- A complete request includes a fully completed PPH request form (available from Expedited examination Submit a Patent Prosecution Highway request (canada.ca)). Particularly, a claims correspondence table is required in addition to an identification of all relevant work product(s) as well as the version of the claims found to be allowable where CIPO is requested to retrieve work products and claims from a Dossier Access System;
- Submit a copy of all INPI-Brazil work product(s) which are relevant to the patentability/allowability of the claims of the corresponding application(s), if not available via Dossier Access Systems (see Annex D for pertinent Dossier Access Systems and Annex E for relevant eligible work products);
- Submit a copy of the claims found to be allowable by INPI-Brazil, if not available via Dossier Access Systems (see Annex D for pertinent Dossier Access Systems); and,
- Submit translations of any of the documents listed in points 2. or 3. above if the required work product(s) and/or claims are not available in English or French.
Patent documents (where not publicly available) and non-patent literature cited by INPI-Brazil may be provided with the request. While provision of these documents is optional, it may further accelerate examination. Applicants may file translations of citations as part of the supporting documentation when initially requesting accelerated examination under the PPH to allow prompt consideration of the citations, if they so desire. The CIPO Examiner may request translation of citations using the standard CIPO examination procedure where translation of a cited document is necessary.
In addition, applicants should notify CIPO of any office actions from INPI-Brazil that are relevant to patentability/allowability which issued after submitting a PPH request, wherein INPI has reversed a prior indication of patentability/allowability. Further, if the office actions cannot be retrieved by CIPO, they should be submitted with the notification.
CIPO will use Dossier Access Systems and machine translations to access and assess supporting documentation to the maximum extent possible. If CIPO has difficulty in obtaining documents listed in Annex B and translations thereof, the applicant may be asked to submit them. When machine translations are determined by CIPO to be of insufficient quality, then the applicant may also be asked to provide manual translation.
The applicant need not provide further copies of documentation if they have already submitted the documents noted above to CIPO through simultaneous or past procedures related to the application.
Annex C: Principles
Consistent with the "MOTTAINAI" concept, PPH eligibility will be based on work available from the INPI-Brazil regardless of where the application was first filed, so long as the applications share the same effective date (priority or filing) and the disclosures support the claimed subject matter.
All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as patentable/allowable by the INPI-Brazil. Claims are considered to sufficiently correspond where, accounting for differences due to translations and claim format, the claims before CIPO are of the same or similar scope as the claims in the corresponding application(s), or the claims before CIPO are narrower in scope than the claims in the corresponding application(s).
In this regard, a claim that is narrower in scope occurs when a claim in the corresponding application(s), is amended to be further limited by an additional feature that is supported in the specification (description and/or claims).
A claim before CIPO which introduces a new/different category of claims to those claims indicated as patentable/allowable by INPI-Brazil is not considered to sufficiently correspond. For example, where the claims in the corresponding application(s) only contain claims to a process of manufacturing a product, then the claims before CIPO are not considered to sufficiently correspond if the claims before CIPO introduce product claims that are dependent on the corresponding process claims.
(In practice, however, a certain degree of flexibility regarding 'sufficiently correspond' may be provided at the discretion of CIPO.)
Annex D: Pertinent Dossier Access Systems
|Dossier Access System
|Canadian Patents Database
Annex E: Eligible Work Products
Corresponding claims are considered to be patentable/allowable as indicated in the following work products:
- "Relatório de Pesquisa com Opinião Escrita" ("Search Report with Written Opinion") where claims are explicitly identified as patentable, ample.
- "Relatório de Exame" ("Examination Report") where claims are explicitly identified as patentable,
- "Decisão de Conceder uma Patente " ("Decision to Grant a Patent"),
- "Notificação de Recusa de Conceder uma Patente Onde Tal Notificação Indica Reivindicações Admissíveis " ("Notice of Refusal to Grant a Patent Where Such Notice Indicates Allowable Claims"),
- "Publicação da Concessão" ("Grant Publication"), or
- "Opinião Preliminaire Sobre a Patenteabilidade" (Preliminary Opinion on Patentability), where claims are explicitly identified as patentable
Eligible INPI PCT work product document names for entry onto PCT-PPH
- Written Opinion of the International Searching Authority (WO-ISA) Footnote *
- Written Opinion of the International Preliminary Examination Authority (WO-IPEA) Footnote *
- International Preliminary Report on Patentability (IPRP) Footnote *
Annex F: Examples of Canadian patent applications that may request accelerated examination under the CIPO-INPI PPH
In the examples A-S below Office of Earlier Examination (OEE) refers to INPI-Brazil, also in its capacity as ISA and/or IPEA, the work product of which is used as a basis for the PPH request, while the Office of Later Examination (OLE) refers to CIPO as the office before which participation in the PPH program is being requested.