Brazilian Federal Court of Appeals for the 2nd Circuit renders a favorable decision reinforcing the illegality of the article 32 of Normative Instruction # 30/2013 regarding the deadline to divide patent applications

November 21, 2023

In the last appellate trial session on IP matters, which occurred on November 7th, the Brazilian Federal Court of Appeals for the 2nd Circuit (TRF-2) unanimously granted an appeal filed by an applicant seeking the review of the trial court decision and the reversal of the BRPTO’s decision to dismiss a divisional patent application with basis on article 32 of its Normative Instruction # 30/2013. This provision, which was considered illegal during the above-mentioned trial session, restricts the deadline to divide the patent application to the end of the examination at the first level of the BRPTO, that is, until the execution of the conclusive opinion about the patentability requirements.

The 1st Specialized Panel concluded that article 32 of the Normative Instruction # 30/2013 violates the principle of publicity of administrative acts, considering that it establishes as milestones to request the division of the patent application events that occur prior to the publishing of the decision rejecting the application – especially the date of issuance of the conclusive technical opinion, which will only be known at a later date, with the publication of the respective decision denying the patent application.

The decision is an important achievement in the case law of TRF-2, as it is the first time that the 1st Specialized Panel recognizes the illegality of the very restrictive understanding established by art. 32 of Normative Instruction # 30/2013. Also, this decision adds to two other decisions rendered by the 2nd Specialized Panel of TRF-2 which have also recognized the illegality of the referred provision, as already reported in our client alert of August 2023. Our firm represented the applicant in all three cases.

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