Brazilian Federal Court of Appeals for the 2nd Circuit grants appeals, indicating that patent applications can be divided up to the end of the appellate level at the BRPTO

August 23, 2023

In two cases decided during the last in-person trial session on IP matters, the Brazilian Federal Court of Appeals for the 2nd Circuit (TRF-2) decided that patent applications can also be divided in the administrative appellate level at the BRPTO.

The 2nd Specialized Panel of the Federal Court of Appeals for the 2nd Circuit unanimously ruled on two appeals filed by an applicant seeking the review of the trial court decision and the reversal of the BRPTO's decisions to dismiss divisional patent applications with basis on article 32 of its Normative Instruction #30/2013. This provision, which was considered illegal during the above-mentioned trial, restricts the right to divide the patent application to the end of the examination at the trial level of the BRPTO, that is, until the execution of the conclusive opinion about the patentability requirements at trial level.

In the decisions of both appeals, it was decided that article 32 of Normative Instruction #30/2013 extrapolated article 26 of the Brazilian Patent Statute by promoting a restrictive interpretation of the expression "until the end of the examination", in addition to hindering the enforcement of article 212, Paragraph 1, of the Brazilian Patent Statute. It was also considered that the provision violates the constitutional rights to full defense, adversarial proceedings and due process of law by anticipating the "end of the examination" of the patent application and, thus, limiting exercise of the right to request the division of parent patent application, and even making it impossible as the moment the opinion is concluded cannot be foretold with certainty. The Court also concluded that the BRPTO's decision violates the principle of publicity of administrative acts, since article 32 of Normative Instruction #30/13 elects dates prior to the disclosure of rejection of the privilege as time frames for the request for division of the patent, especially the date of issuance of the conclusive technical opinion, which will only be known at a later time, with the publication of the decision that rejected the patent application.

These decisions are a significant milestone in the precedents of the TRF-2, which, for the first time, concluded that a rule restricting the division of patent applications to the trial level of the BRPTO is illegal. By recognizing that there is continuity/resumption of the technical examination at the appellate level and, therefore, that applicants can also divide patent applications at the appellate level of the BRPTO (where the "end of the examination" takes place), Brazil is in line with the practice of the most renowned patent offices around the world, such as the European Patent Office (EPO) and the US Patent and Trademark Office (USPTO), which allow division during the pendency of the patent application or before the end of the administrative process. Furthermore, this understanding of the TRF-2 supports applicants who have had their divisional patent applications rejected under the terms of article 32 of Normative Instruction # 30/2013.

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