The BRPTO published, in its official gazette of this Tuesday, May 27, BRPTO/DIRPA’s Ordinance #04, of May 23, 2025, outlining the procedure for reexaminations in the first administrative instance of utility patent applications. This includes certificates of addition of invention and utility model that had an appeal granted under an office action with the publication code 100.2.

The reexamination will be conducted by the same examiner who rejected the application and will be limited to the conditions indicated in the appeal opinion. These grounds include:

i) formal defects, such as non-compliance with procedural rules;

ii) the presence of subject matter in the rejected set of claims which was unaddressed during the substantial examination; and

iii) new set of claims introduced at appeal level containing subject matter unexamined during the substantial examination.

Per Ordinance #14/2024, the BRPTO considers the publication of a rejection as the end of the examination. As such, briefs with third-party observations will not be accepted during reexamination.

Under the new Ordinance, challenges on decisions issued on the second administrative instance will not be permitted. However, the BRPTO may identify new irregularities, conditions, or requirements that could impede an application’s patentability.

Examiners may propose altering the application’s nature, but will not allow its voluntary division. Divisions will only be permitted in cases of a previously identified lack of unity of invention or lack of technical-functional unity. Furthermore, examiners may conduct a new prior art search if the first-instance decision introduces new technical elements or considerations warranting further analysis.

The Ordinance reinforces that a rejection may only be issued if supported by legal grounds already raised during the previous opinion issued under the reexamination stage. If the examiner rejects the application again, applicants retain the right to full defense and a new appeal.

Ordinance #04/2025 can be accessed in Portuguese here.

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