December 28, 2016

Expediting Patent Prosecution in South America

By Gregory S. DeLassus, Associate

Although South America includes many large and commercially significant markets for U.S. and European businesses, patent prosecution is notoriously slow in most South American countries. Brazil, for example, averages approximately ten years from filing to grant, and pendencies in Argentina tend even longer. The United States has a Patent Prosecution Highway (PPH) bilateral agreement with Brazil that can accelerate examination there, but this agreement applies only to oil and gas technologies.


There is some recent good news, however, for U.S. and European firms that want to accelerate their patent applications in South America. Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname, and Uruguay (“PROSUR”) have all recently agreed to the “PPH-PROSUR,” a multi-lateral PPH agreement among these nine South American nations. A grant in any one of these countries will serve as a basis to accelerate examination in the others. Therefore, the trick to accelerating examination in South America will be to get a set of granted U.S. or EP claims granted in one of the participating PROSUR countries.

Both the United States and the EPO have bilateral PPH agreements with Colombia. Therefore, if a U.S. or European enterprise wants to reach a faster resolution of (e.g.) a Brazilian or an Argentine patent application, one can file a Colombian application, and seek accelerated examination in Colombia based on allowed U.S. or European claims. When the Colombian application is approved, the Colombian approval can then be used as a basis to accelerate examination in any of the other PROSUR countries.

This plausibly has the potential to shrink pendency for South American patents from an average of ~10 years to more like ~4 years. The strategy requires the applicant to file in Colombia, however, so enterprises interested in faster examination in (e.g.) Argentina and/or Brazil should consider also entering the Colombian national phase.

Alternatively, the time between filing and grant in Chile tends to be much shorter than in Argentina or Brazil. Therefore, one can also accelerate Brazilian and Argentine applications by filing in Chile, and then using the granted Chilean claims to accelerate examination in Argentina, Brazil, or any of the other PROSUR member nations.