BRPTO invites public comments on proposed normative ordinance regarding formalities and content of patent applications and certificates of addition

April 24, 2023

(Federal Register of April 20, 2023)

The BRPTO, through the Federal Register of April 20, 2023, has invited public comments on the draft of a Normative Ordinance establishing general rules on procedures for the proper compliance with the Brazilian Patent Statute provisions, regarding the formalities and content of patent applications and certificates of addition. This normative ordinance will replace Normative Instructions 30 and 31 from 2013, and although it is related to patent applications and certificates of addition filed under the Paris Convention, it will also be applied to PCT national phase applications whenever the PCT-related rules do not cover the practice referred to in the draft.

The Normative Ordinance draft basically merges the provisions of Normative Instructions 30 and 31 from 2013 and puts on paper practices already adopted by the BRPTO, such as (i) the limitation of the procedures to electronic filings, as paper format briefs are no longer accepted by the PTO; (ii) the fact that an application which does not comply with the filing requirements shall not be considered as an effective application and will not be part of the state of the art, or (iii) that the official fee payment slip must be issued in the name of one of the applicants.

The most significant changes are: (i) the requirement of submitting a marked-up version file highlighting all modifications (strikethrough marking for removed excerpts, and underlining for added or replaced excerpts), when submitting amendments; (ii) the removal of the provisions that required the citation of prior art documents mentioned in third party observations in the examination search report issued by the BRPTO; and (iii) the BRPTO's new definition for the end of first substantive examination, which shall be the publication date of the allowance, rejection and/or dismissal decision.

The draft of the normative ordinance is available here and open for comments and/or suggestions until June 18, 2023 (end of the consultation period).

After the deadline for the submission of comments and/or suggestions, the BRPTO will publish its reply to the inputs received during the public consultation along with the final text of the Normative Ordinance.

For more information on the public consultation or its English version, please contact us at patents@lickslegal.com. We will be glad to assist you.