3/17 # 04. Brazil Japan PPH is Officially Established

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1 Brazil Japan PPH is Officially Established By Rafael Salomão S. R. Aguillar and Fabio de Araujo Ottoni Ferreira T he Brazilian Patent Office (BPO) has officially released the rules that will govern the Patent Prosecution Highway (PPH) agreement entered with the Japanese Patent Office (JPO) last month. The program will come into force on April 1, 2017 and shall last for two years. 3/17 # 04 Under the program, patent applications originally filed before the JPO (including via PCT) that meet the criteria set forth on BPO's Resolution no 184/2017 will be entitled to prior examination within the BPO once the application is granted by the JPO. The opposite is also true for applications originally filed before the BPO being prosecuted before the JPO. n Brazil, the scope of the program is restricted, though, chiefly to information technology patents and also to mechanical engineering and automobile related technology. You may check the eligible PC patent codes on the English version of the Resolution attached hereto. These restrictions do not apply at the JPO. Requests within the BPO will be limited to six applications per applicant per periods of four months. BPO will accept a total amount of 200 applications under this PPH. No such limitations will apply to the JPO. PPH Japan follows the well-succeeded PPH USA program for oil & gas patents. Telecommunication and information technology is one of the fields experiencing the most severe delays within the BPO. Hence, through this new PPH program, the Japanese leadership in the area is acknowledged and expected to assist the BPO to reduce the current huge backlog. Should you want to receive more information on the program or to engage therein immediately, please feel free to contact us, whether in written or by phone, directly to your usual contact within our office or to mail@kasznarleonardos.com. Anderson Ribeiro Cláudio Roberto Barbosa Eduardo Colonna Rosman Elisabeth Kasznar Fekete Fabiano de Bem da Rocha Filipe Leonardos Gabriel Leonardos Gustavo Barbosa João Luis ianna Liz Starling Nancy Caigawa Rafael Lacaz Amaral Ricardo Boclin Ronaldo arella Gomes Tatiana Silveira 2017 Kasznar Leonardos

2 MNSTRY OF DEELOPMENT, NDUSTRY AND FOREGN TRADE BRAZLAN PATENT AND TRADEMARK OFFCE (NP) RESOLUTON NP/PR No. 184, OF MARCH 24, 2017 Subject: t establishes the Shared Examination Pilot Project PPH NP-JPO. The PRESDENT and the DRECTOR FOR PATENTS, COMPUTER PROGRAMS AND TOPOGRAPHY OF NTEGRATED CRCUTS AT THE BRAZLAN PATENT AND TRADEMARK OFFCE (NP), pursuant to the duties and responsibilities conferred thereon by Decree No. 8,854 promulgated on September 22, 2016, HEREBY RESOLE: Article 1st. This Resolution establishes the administrative proceeding for the Shared Examination Pilot Project / Patent Prosecution Highway PPH, agreed between the Brazilian Patent and Trademark Office NP and the Japan Patent Office JPO, hereinafter called the PPH NP-JPO Pilot Project. Article 2nd. For the purposes of the provisions set forth in this Resolution, the following definitions are adopted: - LP: Law No. 9,279, promulgated on May 14, 1996; X X X X X - PC: nternational Patent Classification; - CPC: Cooperative Patent Classification; - CUP: Paris Convention; - PCT: Patent Cooperation Treaty; - RO: Recipient Office under the aegis of the PCT; - SA: nternational Search Authority under the aegis of the PCT; - PEA: nternational Preliminary Examination Authority under the aegis of the PCT; - First Patent Application: patent application with priority right assured through filing in another national patent office or international organization as established by the CUP; or international filing under the aegis of the PCT, with no priority claim; - Second Patent Application: patent application, including international, claiming the first patent application as priority, under the aegis of the CUP; or the national phase of the first patent application under the aegis of the PCT; - Patent Family: set of patent applications filed in more than one national patent office or international organization, in which they all claim at least the first patent application as priority under the CUP; - OFF: Office of First Filling Patent Office where the first patent application is filed; - OSF: Office of Second Filling Patent Office where the second patent application is filed;

3 X X - OEE: Office of Earlier Examination Patent Office first issuing a decision to grant a patent to an application for a patent family, regardless of whether it is the OFF or OSF; - OLE: Office of Later Examination other Patent Offices where a patent application was filed in the same family as the one decided by the OEE, and with such patent application awaiting examination; X X - Suitable patent application: patent application that complies with the eligibility criteria established in this Resolution; - Request Date: registration (protocol) date of the petition requesting for a fast-track shared examination exclusively through an electronic form; X - Sufficiently corresponding application: application whose subject matter described in the application filed with the OLE does not extend (or modify) the subject matter deemed to be patentable by the OEE, despite differences due to translations, with both belonging to the same patent family; XX XX XX - Sufficiently corresponding claim: claim in which the scope of the subject matter as claimed at the OLE is the same or more restricted than the subject matter deemed to be patentable at the OEE, despite differences due to translations of the claim; - Scope of claim more restricted: the scope of a claim is more restricted when it is limited, under the terms of Article 32 of the LP and Resolution NP/PR No. 93, of June 10, 2013; and - RP: ndustrial Property Official Gazette. Article 3rd. For the effects of this Resolution, in the PPH NP-JPO Pilot Project there take place the following stages: - The applicant files the first patent application, making the national patent office or international organization the OFF; - The applicant files the second patent application, claiming the first patent application as priority, making the national patent office the OSF; - The national patent office issuing the first decision to grant a patent to either the first or second patent application becomes the OEE; - The applicant requests the participation in the PPH of the application in the same family at the OLE, complying with the requirements and presenting the outcome of the OEE decision; and - f deemed acceptable, the OLE prioritizes the patent application in the same family at all subsequent stages, through to the final decision. Sole Paragraph. Possible abandonment of the First Patent Application that served as the priority document for the international filing under the aegis of the PCT does not exclude the participation in the respective national phases in the PPH NP-JPO Pilot Project. Article 4th. Applications for a patent of invention or applications for a utility model patent may participate in the PPH NP-JPO Pilot Project, provided that they simultaneously: - Belong to the same patent family for which at least the first patent application was filed with the NP or the JPO or under the aegis of the PCT at the BR/RO or at the JP/RO; - Acting as the OEE, the JPO allowed a patent application in the same patent family. 2

4 Article 5th. Patent applications may participate in the Pilot Project when the subject matter claimed thereby are linked specifically to the technical field of information technology and the patent application was simultaneously classified by the NP under any one of the symbols listed in Annex appended to this Resolution, including their respective lower hierarchical levels of classification. Article 6th. The granting of fast-track examination of a patent application is conditional on the compliance with the following requirements: - Patent application published, including international publication when applicable, or accepted through the admissibility examination for entry into the national phase of applications filed via PCT; - Patent application with examination requested, compliant with the provisions set forth in Article 33 of the LP; - Patent application whose examination has not been suspended for the compliance with a requirement issued previously by the NP; - Patent application that is not in default on payment of the annual fees addressed in Article 84 of the LP; - Patent application that has no fast-track examination request granted as well as published in the RP; - Patent application that is not involved in litigation before the Courts in Brazil; and - Patent application that is not divided, except those resulting from the direct division of the original application and deriving from a lack of unity of invention alleged by the OEE in the sufficiently corresponding application. Article 7th. The applicant must submit the fast-track examination request. 1st When not undertaken by the applicant himself, the acts addressed by this Resolution must be accompanied by a deed conferring power of attorney, as set forth in 1st of Article 216 of the LP. 2nd Should there be more than one applicant, the fast-track examination request may be submitted by any of the parties, either individually or jointly. Article 8th. Each applicant may submit up to 6 (six) patent applications in each 4 (four) monthly cycles. 1st Should there be more than one applicant, the limit established in the Head Paragraph is applicable to all other patent applications with at least one applicant in common. 2nd The monthly cycle addressed in the Head Paragraph of this Article is calculated from the first to the last business day of the month. 3rd The monthly cycle addressed in the Head Paragraph of this Article cannot be extended if the closing date thereof falls on a day deemed to be a non-business day. 4th Other requests submitted by the same applicant within the same monthly cycle will not be acknowledged and accepted. Article 9th. The applicant is subject to payment of a participation request assessment fee. Article 10. At least the following documents and information must be submitted together with the participation request: - Electronic form of a PPH fast-track examination request for a patent application; 3

5 - Proof that it is a patent application as defined in Article 4th of this Resolution; - Patent application altered in order to sufficiently correspond to the subject matter allowed previously by the JPO for a patent application in a same family, complying with the normative instructions in force referring to alteration of patent applications submitted to the NP; - Correspondence table for the sets of claims, evidencing the correlation between the new claims submitted to the NP and those claims deemed to be patentable by the JPO as the OEE, in due compliance with the model in Annex appended to this Resolution; or if the claims submitted to the NP are a mere translation of the claims in the application in the same family allowed by the JPO, a declaration providing this condition; and - Declaration that the patent application is not involved in Court litigation in Brazil. Article 11. Should the technical examination report from the OEE mention non-patent prior art documents, copies of them must be submitted together with the participation request. Article 12. Should the object of the patent application derive from access to a sample of a Brazilian genetic heritage s component or associated traditional knowledge, the patent application proceeding must be instructed with the information required by the law in force. Article 13. During the analysis of the participation requests or of the technical examination, the NP may request the applicant to provide: - A copy of one or more search reports, technical examination reports undertaken by the OEE; - A copy of prior art documents mentioned by the OEE in its technical examination reports; - A copy of the action undertaken by the JPO, as the OEE, determining the subject matter entitled to patent protection; - A copy of the set of claims deemed to be patentable by the OEE; - A copy of possible rebuttals submitted by the applicant to the OEE; - A copy of the action undertaken by the JPO, as the OEE, allowing the counterpart patent application; Article 14. Should copies of documents be submitted, the applicant must declare that they are faithful copies of the original documents, reproducing the form and content thereof. Sole Paragraph. Should the documents described in the Head Paragraph of this Article be written in a language other than Portuguese, English or Spanish, the applicant must also submit the respective simple translation into Portuguese, reproducing the content thereof. Article 15. Checking fast-track examination requests and ascertaining the eligibility of the patent applications suitable for participating in the PPH NP-JPO Pilot Project is the responsibility of the Patents Board DRPA. 1st This department, DRPA, delegates responsibility to the Technical Commission of the Co-Operative Examination Group for the analysis and selection of the applications submitted to the Pilot Project. 2nd The Co-Operative Examination Group convenes the Technical Commission. 3rd The evaluation of requests as addressed in the Head Paragraph of this Article follows the chronological order of the date of the last request for the participation in the PPH NP-JPO Pilot Project. 4

6 Article 16. During the analysis and selection of requests submitted to the Pilot Project, the Technical Commission shall draw up a report on the: - Suggestion on the possibility of participation; - ndication of the existence of remediable irregularities; and/or - Suggestion on the participation refusal. Article 17. Whenever the NP issues remediable irregularities, the applicant may re-submit the PPH fast-track examination request within a term of 60 (sixty) days, as provided in Article 224 of the LP, correcting any possible irregularities, with no need to re-submit documents in which no irregularities were found. Article 18. Decisions on the participation requests are taken by the Patents Director. Article 19. The NP shall conduct technical examinations of up to 200 (two hundred) patent applications as the OLE. Article 20. When a patent application that has been submitted is deemed to be suitable for participating in the PPH NP-JPO Pilot Project, the NP shall issue a notification of the grant of the fast-track examination to the patent application through publication in the RP. Article 21. When the patent application is not deemed to be suitable for participating in the Pilot Project or there are no more vacant places, the NP shall issue a notification of the denial of the fast-track examination to the patent application through a specific announcement published in the RP. 1st A denied fast-track examination keeps the patent application in normal examination processing stream. Article 22. Requests to appeal are not acknowledged and heard against decisions denying the participation of the patent application when: - t is in disagreement with Article 219 of Law No. 9,279, promulgated in 1996; - The decision is based on the non-presentation of a document or its presentation after the term established in this Resolution; - The decision is based on an incomplete or incorrect presentation of one or more documents and information required in this Resolution; and - The requirements set forth in Article 6th of this Resolution were not complied with prior to the evaluation by the Technical Commission. Article 23. The PPH NP-JPO Pilot Project does not alter the principle of independence of rights established by Article 4bis of the CUP, whereby: - The applicant must comply with the dispositions in the LP for patent applications filed with the NP; - The applicant is not exempt from the other mandatory payment of fees pertinent to the patent application procedural flow; and - The patent application examination is conducted in compliance with Brazilian law, respecting all other procedures in force on the examination date. Article 24. The PPH NP-JPO Pilot Project shall receive participation requests for up to 2 (two) years and shall continue until decisions have been handed down on all the patent applications rated in suitable. 5

7 Article 25. This Resolution enters into effect on the date of April 1 st, 2017 and its publication shall take place in the Electronic ndustrial Property Official Gazette. Rio de Janeiro, March 24, 2017 LUZ OTÁO PMENTEL President JÚLO CÉSAR CASTELO BRANCO RES MORERA Director for Patents, Computer Programs and Topography of ntegrated Circuits 6

8 ANNEX SYMBOLS OF THE NTERNATONAL PATENT CLASSFCATON PC n order to participate in the PPH NP-JPO Pilot Project, the patent applications must be classified under at least one of the nternational Patent Classification PC symbols, including their respective lower hierarchical levels of classification, as shown herein below: Technical Field PC Codes 1 Electrical devices and machines, energy F21#, H01B, H01C, H01F, H01G, H01H, H01J, H01K, H01M, H01R, H01T, H02#, H05B, H05C, H05F, H99Z 2 Audiovisual Technology G09F, G09G, G11B, H04N-003, H04N-005, H04N-009, H04N-013, H04N-015, H04N-017, H04R, H04S, H05K 3 Telecommunications G08C, H01P, H01Q, H04B, H04H, H04J, H04K, H04M, H04N-001, H04N-007, H04N-011, H04Q 4 Digital Communication H04L 5 Basic Communication Processes H03# 6 Computer Technology (G06# not G06Q), G11C, G10L 7 nformation Technology-based Management Methods G06Q 8 Semiconductors H01L 9 Sundry B60K, B60L, B60W, B62D, B62J, F02D, G02B, G02F, G03G, G08G, H01S, H04N19, H04N21, H04W, H05H 7

9 ANNEX CORRESPONDENCE TABLE FOR CLAMS Correspondence Table for Claims Claim submitted to the NP Claim patented with the JPO Remarks on the Correspondence 8