New procedure for handling patent applications during second instance examination
On December 12, 2023, the Brazilian Patent and Trademark Office (BPTO) published new rules in its Industrial Property Gazette No. 2762, reinforced by the BPTO’s president’s Order published in the Industrial Property Gazette No. 2764 from December 26, 2023, representing a milestone for the interpretation of article 212 of the Brazilian Industrial Property Law (IPL) and second instance decisions made by the BPTO. According to the new rules, the BPTO stated that claim amendments would no longer be accepted during the second instance examination, even if narrowing the scope of the claimed subject.
Following these new rules, on February 27, 2024, and more recently on March 05, 2024, the BPTO issued two Ordinances (No. 003/2024 and No. 007/2024) in its Industrial Property Gazettes No. 2773 and No. 2774, respectively, further clarifying the new interpretations. Said Ordinances clarified that those amendments expressly limited to existing claims are still accepted. In other words, amendments that are solely based on the Specification, but are not explicitly claimed, are no longer accepted. Furthermore, the new procedure was initially supposed to be retroactive for all patent applications under ongoing substantive examination, i.e., those which an Official Action has been issued for and have not been subject to a final decision yet. Therefore, said patent applications would be included in the new rules during the second instance examination as well. However, the retroactive effect was not applied, as explained below.
By comparison, according to the previous procedure, if the Applicant had not amended the claims fully complying with the requirements made during the first instance, the so-refused patent application used to be remitted to the second instance examination. At this stage, the BPTO used to apply the so-called “suspensive and full devolutive effects”, in compliance with the provisions of Article 212, §1 of the Brazilian IPL. In practice, this means that the patent applications under the second instance were reexamined by a new Examiner, who issued a new technical opinion on the subject covered by the patent application, and the Applicant was able to amend the claims accordingly. Therefore, we are of the opinion that the new rules have considerably limited the Applicant’s possibilities during second instance examinations when compared to the previous procedure. We understand that this misinterpretation of Article 212 of the IPL has led to a violation of the legal framework regarding amendments to the claims and the effects of appeals, especially Article 32 of the IPL, which states that “to better clarify or define the patent application, the applicant may make changes up to the examination request, as long as these are limited to the matter initially revealed in the application”, and has ignored the “full devolutive effect” warranted to appeals by article 212, §1, of the IPL.
We further inform that the BPTO published a final resolution in its Industrial Property Gazette No. 2776 from March 19, 2024, the Ordinance No. 10, from March 08, 2024. Said Ordinance approved the Guidelines for Appeals and Administrative Nullity Procedures. This topic was reinforced by the BPTO, wherein the retroactive effect was not applied for the cases under substantive examination before April 1st, 2024, on the condition that, as stated in said final resolution, “in the absence of an amendment request referred to in the BPTO’s president’s Order, published in the Industrial Property Gazette No. 2764 from December 26, 2023, it should be held admissible and granted the appeal resulting from a patent application for which a first Official Action (Order 6.1) or Technical Opinion (Order 7.1) is issued by the 1st of April. In such case, it shall be up to the defendant/applicant to, upon responding to the requirement set out by the General Coordination of Appeals and Administrative Nullities (CGREC), justify, and prove the technical inability of suitability to the Guidelines for Appeals and Administrative Nullity Procedures”.
According to this final resolution from the Industrial Property Gazette No. 2776, the patent applications in which the substantive examination started after April 1st, 2024, amendments in the second instance are no longer accepted. Therefore, we understand that, in practice, the BPTO continues to accept amendments during the first instance since the subject originally claimed is not broadened.
However, the above text remains unclear and subject to misinterpretation concerning “to justify and to prove the technical inability of suitability”. Given that, the Brazilian Patents Associations are currently analyzing this decision to delineate potential decision-making, considering that, after several meetings with the BPTO to make the scope of these changes clear, the BPTO has already stated that this resolution is valid. We understand that all those who use BPTO’s services must have clear and accurate guidance of the above Guidelines, thus avoiding any risk on legal uncertainty in the Brazilian patent system.
We will inform you as soon as we have further updates on this matter, and we will carefully analyze case by case under our responsibility as soon as the respective technical opinions are issued by the BPTO.