Brazilian Patent and Trademarks Office (INPI) allows amendments to patent applications during the appeal phase, subject to new criteria

As announced by our firm in our Newsletter No. 67 of December 15, 2023, a position of the INPI’s Federal Attorney’s Office, turned into a norm by the President of the autarchy, changed the understanding consolidated for decades in Brazil, starting to prohibit the submission of amendments to patent applications in the appeal phase, even if they were to restrict their scope.

Today it was clarified by the INPI that restrictive amendments to address the objections raised in the first instance examination may be accepted in the second instance, if they do not imply a new claim and upon observance of the following 4 new conditions published in the Industrial Property Magazine (RPI) #2773, published today, February 27, 2024:

1.  Amendments (or modifications) to the claim set must necessarily have a causal connection with the objections raised by the first instance. In other words, it must be clear that the changes are related to the reasons for the rejection of the patent application.

  2.   Only modifications that are restrictive logical derivations of the claim set that was rejected can be submitted. Abandoned subject matter in the first instance cannot be recovered based on this condition.

  3.  Only restrictions that are expressly provided in dependent claims or derived from the combination of independent/interlinked claims, will be admitted. Restrictions based on the specifications that are not expressly stated in the contested claim set will no longer be allowed. For example, an excipient that was only included in the specification cannot be used to restrict the claims if it is not described in a dependent claim.

  4.   Requests for a change of category will not be allowed in the second instance unless the said change has already been requested by the applicant in the first instance and has been duly denied.

The possibility of accepting amendments was presented through Opinion 003/2024/CGPI/PFE-INPI/PGF/AGU, which complements Opinion 0019/2023/CGPI/PFE-INPI/PGF/AGU. The criteria above were made public in the decision notice of President Julio Cesar Castelo Branco.

It was also clarified that data or documents can only be submitted in the second instance to support the argument of inventive step.

In light of the recently announced rules by the INPI, which may unduly limit the rights of holders, and that all acts of the INPI are subject to judicial control, we remain committed to defending the interests of our clients and ready to design the best strategy on a case-by-case basis. We have been actively reviewing pending appeals at the INPI to ensure that none of our clients’ claims are unduly limited. For further details, please feel free to contact us at mail@kasznarleonardos.com.