Industrial Design Registration: new BRPTO opinion on the scope of appeal

As recently reported, the BRPTO announced a series of new guidelines regarding the processing of patent, trademark and industrial design applications. Check out our latest newsletters about changes to trademarks and patents here.

Specifically in relation to industrial designs, the BRPTO gave normative force, on 12/12/2023, also to Opinion No. 00018/2023 (link available only in portuguese) through which its Attorney’s Office issued guidance to the effect that when the second instance, when assessing the appellant’s reasons and giving its opinion on reforming the rejection decision, but finding that the object does not have the technical characteristics to be registrable as an industrial design, it must return the case to the first instance, which has internal regulatory competence to analyze the formal and technical conditions of an industrial design registration application.

This is a significant change, since, currently, the second instance publishes a new rejection, instead of returning the registration application to the first instance.

The process of registering an industrial design is different from the other procedures provided in the BR IP Law for the granting of industrial property rights, since there is no substantive examination or examination of merits before granting the registration, as provided for in article 106 of the BR IP Law. Thus, the formal preliminary examination and the technical examination are carried out immediately after the industrial design registration application is filed in our country, both at the first administrative level.

The preliminary formal examination consists of a simplified analysis of the documentation contained in the application, devoid of any approach regarding the novelty and originality of the object of the registration application. The technical examination, on the other hand, consists of analyzing the conformity of the technical characteristics contained in the application with the requirements set out by the BR IP Law, aiming to determine, mainly, whether the object under examination can be considered an industrial design.

Therefore, it can be concluded that the technical examination carried out at the first administrative level, in the case of industrial designs, is not exclusively formal. Even though the first administrative instance does not examine substantive criteria related to the novelty and originality of the object, the technical characteristics of the object under examination must be investigated before granting registration.

The new BRPTO guideline allows the application to be analyzed appropriately by the instance competent to do so.

Our team is closely monitoring the implications for clients and remains available to discuss optimal strategies and provide further clarification. Please feel free to contact us at mail@kasznarleonardos.com if you have any questions.