New draft guidelines for patent examination
November 10, 2017

Felipe Mesquita and Luiza Cotia In 2012, the Brazilian Patent and Trademark Office (BRPTO) began reviewing its patent examination guidelines and creating new rules for situations where previously no guidance was available. Part of this review process involved the introduction of public hearings together with stakeholders and the invitation of comments on the proposed draft guidelines. The BRPTO’s plan is to create a combined set of guidelines divided into the following five parts: (i) software patents; (ii) utility models; (iii) formal aspects for filing applications (patentability block one covering title, written specifications, claim language, drawings and summary); (iv) biotechnology patents; and (v) patentable subject matter and patentability requirements on substantive examination (patentability block two). The BRPTO has already enacted a number of Resolutions (298/2012 on utility models, 124/2013 on formal aspects for filing applications (patentability block one) and 144/2015 on biotech patents). Public hearings were also held to deal with the draft software patent examination guidelines. However, the official enactment of these guidelines has been pending for a considerable time. On March 16 last, the BRPTO published the draft guidelines for patentable subject matter and patentability requirements for substantive examination (patentability block two) in the Official Gazette. This step opened a 60-day window for comments and suggestions from the public. Block two specifically focuses on patentable subject matter, patentability requirements and their examination by the BRPTO. It includes specific chapters on (i) novelty; (ii) inventive activity (non-obviousness); (iii) industrial application (utility); (iv) definition of prior art and the person skilled in the art (PHOSITA); (v) non-patentable subject matter; (vi) Markush formulas; and (vii) compositions of matters. The previous guidelines (from December 2002) were outdated and did not lead to the creation of clear rules for the assessment and analysis of the patentability requirements. By way of an example, the 2002 guidelines cover the non-obviousness requirement on one page only, merely providing a six-line paragraph for the definition, secondary considerations and examples. The secondary considerations and examples were interpreted as evidence of obvious invention. Utility models, which were described in a similar manner, are also now the subject of a specific guideline. The non-obviousness requirement now takes up 16 pages of the new draft and covers the following: (i) the definition of the PHOSITA; (ii) the rules for combination of two or more prior art documents; (iii) secondary considerations; and (iv) the steps to assess inventive activity (determining the state of the art, determining the distinctive characteristics of the invention and/or the technical problem solved by the invention and determining if the invention is obvious or not for a PHOSITA). Markush formulas and compositions of matter were not mentioned in the previous guidelines. In the new guidelines, these subjects are set out in separate chapters containing the definitions and specific rules on how to assess novelty, inventive activity and enablement. The BRPTO has been examining and granting patents for biotech inventions, inventions claiming Markush formulas and compositions of matter for years. However, it is only now that a draft guideline has been released. Previously, the BRPTO’s examiners were examining patentability with reference to internal regulations, that were not disclosed to the public. In this regard, the draft guidelines represent a positive step towards democracy, the rule of law and government transparency. The draft guidelines are not ‘new’, but in reality constitute only the publication of the internal regulations that the examiners have been using for quite some time. While it is true that society will now have a chance to comment on and suggest changes to the draft guidelines, in reality, these rules on the examination of patentability have been in use for many years. The above position presents an opportunity for patent owners and applicants to achieve legal certainty. The establishment of guidelines with clear rules avoids the possibility of arbitrary and illegal use of government power to deny patents for political reasons. The BRPTO’s examinations can now be considered more predictable and patentees should feel more confident about the outcome of their applications if they follow the guidelines. The probability of success in legal action will also increase since judges will be able to match what happened in actual cases with the expected behavior of the BRPTO’s examiner and therefore depend less on the analysis of a court-appointed expert. While the best-case scenario has not yet been reached, the guidelines are certainly  a step in the right direction, with clear advantages to patent owners and applicants.

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This article was originally published in “WIPR”, World Intellectual Property Review. For further information, please access the following website: http://www.worldipreview.com/contributed-article/new-draft-guidelines-for-patent-examination

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