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The BRPTO ruled that it is not possible to amend a patent application during the appeal phase

On Tuesday, December 12, 2023, the BRPTO published new rules that limit applicants’ acts in the administrative process for granting patents.

At the same time, the BRPTO announced a change in the queue for technical examination of patent applications. As of January 1, 2024, applications will be examined in the order in which they are requested for examination, rather than by the date of filing. The BRPTO also announced new rules for the areas of trademarks and industrial design.

The new regulations were published after months of widespread publicity by the Brazilian National Institute of Industrial Property (INPI) of its goal of granting patents within two years by 2026.

Based on the new understanding set forth in Opinion No. 19/2023, which comes into force on February 12, 2024 (according to the decision of the President of the BRPTO Júlio César Castelo Branco Reis Moreira), the applicant for a patent application will not be able to submit amendments to the claim set in administrative appeal against the decision that rejected their patent application.

This includes even potential restrictive amendments to the claim set presented in the appeal phase, even if they are considered essential to overcome the objection contested in the second instance or if they are intended to provide greater clarity and precision to the matter at issue.

According to this understanding, the devolutive effect guaranteed in the appeal phase would not allow the presentation of amendments to the claim set, even to reduce its scope, or the presentation of any new documents not presented during the proceedings in the first instance, whether due to non-compliance with a requirement, by contesting the INPI’s primary understanding or for any other reason.

The new BRPTO’s determination once again raises the issue of the controversial deadline established in Brazil for the presentation of voluntary amendments, which are only accepted by the Agency until the moment of the request for technical examination.

Although it is clear that changes to the claim set with the objective of reducing the scope are not limited in time by the request for technical examination, since they do not cause harm to third parties or the public interest, the new prohibition in the appeal phase goes against the federal regulations governing the administrative process for granting patents and to the understanding already consolidated by the Judiciary in the sense that the applicants are guaranteed the full devolutive effect of their appeals, and there can be no limitation on the reassessment of the procedure instituted in the first administrative instance, including the production of new technical examinations in the appeal phase.

Our firm is committed to continuing to work in favor of the rights of patent holders, and we will keep our clients informed about the developments of this issue. For further details, please feel free to contact us at mail@kasznarleonardos.com.

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