September 7, 2023
In Brazil amendments to claims are possible if the patent applicant can show the changes are limited to the matter initially disclosed in the patent application (Article 32 of Patent Statute 9,279 of 1996). Thus, like most other countries, Brazilian patent law contains a prohibition against added matter.
However, in a separate provision, the Brazilian Patent Office (BRPTO) establishes the date of the examination request as a limitation to the filing of amendments aiming to broaden the scope of protection. According to Rule #93/2013, after the filing of the request for examination petition, only modifications intended to better define, correct translation errors, or restrict the claimed scope of protection are acceptable. The BRPTO usually doesn’t allow amendments that could be considered as broadening or changing the claimed scope of protection.
Interestingly, the BRPTO accepts changes when the original set of claims presents, by a huge mistake (in Portuguese: , a claim drafted in an incorrect category (item 2.4 (iii) of Rule #93/2013). As can be seen below, there is a lot of discretion when applying the meaning of “huge mistake”. For instance, the BRPTO doesn’t accept the change from therapeutic method or EPC2000 claims to Swiss-type, which is the currently acceptable format for claiming medical uses in Brazil.
Examples of accepted changes:
After analyzing the amendment made to patent application PI 0820009-2, the examiner stated that “[i]n the case of the present application, the set of claims presents composition claims that are defined by their constituents (…). That is, the original claim already presented composition features, so that it cannot be considered a huge mistake (…). Thus, it is concluded that the amendments performed in the set of claims (…) cannot be accepted, as they were presented after the date of request for examination of the original application and change the scope of protection initially claimed in the valid set of claims, which is contrary to Article 32 of the Brazilian Patent Statute in force”.
After analyzing the amendment made to patent application PI 0806095-9, the examiner stated that “(…) the change of method of treatment original claim 19 to use in the form of the so-called ‘Swiss formula’ described in new claim 17 changes the category of claim, which is not accepted according to Rule #93/2013 (…). It should be noted that a method of treatment is a completely different matter from ‘use of a composition to prepare a medicament to treat a certain disease’”.
Those examples show that the “request for examination” is the right time to define the scope of protection sought in Brazil. It is of paramount relevance that patent applicants double check their claims when filing examination requests, considering further discussing the cases with patent attorneys with experience in litigation can be useful to get claims granted in Brazil.
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