BRPTO creates new rules related to the processing of appeals

December 26, 2023

On December 12,  2023 the BRPTO issued a new interpretation on the rules related to the appeal stage of patent applications processing, effectively limiting the actions available to patent holders during this point of the process.

This new interpretation is present in the Prosecutor’s Office Opinion # 00019/2023/CGPI/PFE-BRPTO/PGF/AGU1, which, along with three other Opinions, was given normative effect by the President of BRPTO, Mr. Júlio César Moreira, in a BRPTO’s Decision Order published on the BRPTO official gazette #2762 of December 12, 2023. Said Opinion limits the provisions of paragraph 1 of article 212 of the Brazilian Patent Statute, which guarantees the “full review effect” of the appeal, “applying all provisions relevant to the first instance examination”:

Art. 212. Unless otherwise expressly provided, the decisions referred to in this Law may be appealed, which must be filed within 60 (sixty) days.

Paragraph 1 Appeals will be received with staying and full review effects, applying all provisions relevant to the first instance examination, where applicable.

Although the aforementioned Opinion recognizes that BRPTO has a consolidated understanding on the possibility of changing the set of claims at any stage of the examination, including the appeal stage — during which the applicant requests the reduction of its scope2, the new interpretation published by the BRPTO indicates the end of this possibility.

BRPTO’s Opinion also states that “innovation is not applicable” within the scope of the Brazilian Patent Statute appeal “to include a new claim”, even if the amendment reduces the scope of the set of claims, since such “innovation” in the process would be prevented due to administrative preclusion.

That is, according to BRPTO’s new understanding, the scope of the patent application and examination would be crystallized in the first instance, therefore, any change in the facts or scope of the patent application to be analyzed in the appeal would be true innovation, prevented by the administrative preclusion operated.

With the adoption of such measures, the BRPTO makes the rules for presenting voluntary amendments even more restrictive than those limitations already existing in Rule #93/20133, which establishes the guidelines on the applicability of Article 32 of the Brazilian Patent Statute. It is important to mention that the current interpretation of article 32, provided for in Rule #93/2013, has already been maintained by the Judiciary when even more restrictive interpretations were brought to its attention.

The new Opinion also prevents the inclusion of new data when presenting the appeal or during its processing, also modifying practice consolidated by the BRPTO. This change impacts all the patent application holders, who need to readjust their strategies to take into account that the examination in the second instance becomes extremely limited.

This new interpretation will be implemented by BRPTO from April 2, 2024, according to the Notice published in BRPTO’s official gazette #2764, of December 26, 20234. By that date, all pending appeals must comply with the new rules. Subsequently, appeals that are not in accordance with the Opinion will be required to be adapted within 60 days.

In this latest statement, the authority also makes itself available to analyze any new legal manifestations that could lead to possible changes in understanding and highlighted that “any type of change will be widely publicized, in order to avoid harm to users”.

The new interpretation severely impacts the possibility of patent application holders to act in the appeal stage and must still be subject to new positions by users, requiring adjustments. The office is already working on a strategy to defend the interests of our clients and will also respond in due course to the BRPTO seeking to improve the rules relating to appeals.

For more information on this subject, please email patents@lickslegal.com.

1Opinion #00019/2023/CGPI/PFE-INPI/PGF/AGU, published in the BRPTO´s official gazette #2762 on December 12, 2023. Available at: http://revistas.inpi.gov.br/pdf/Comunicados2762.pdf. Accessed on: 12 Dec. 2023.

2Opinion #19. “20. It is also ascertained that there is a consolidated understanding within the scope of the BRPTO according to which, after the date the examination request is filed, amendments to reduce the scope of the set of claims are allowed because "it serves the public interest, since the part removed from what was initially claimed will become part of the public domain, to the free competition".

3Rule #93/2013 – establishes guidelines on the applicability of the provisions of Article 32 of Law #9,279/96 in patent applications, within the scope of the BRPTO. Available at: https://www.gov.br/inpi/pt-br/backup/legislacao-arquivo/docs/resolucao_093-2013__artigo_32_1.pdf. Accessed on: 18 Dec. 2023.

4http://revistas.inpi.gov.br/pdf/Comunicados2764.pdf