Changes in the Brazilian patent prosecution practice

The Brazilian Patent Office published recently new rules regarding acceptance of amendments at the appeal stage in patents

(I) As you may recall the BR Patent Office published recently new rules regarding acceptance of amendments at the appeal stage. These new rules have been broadly discussed afterwards and as a result, the BR Patent Office published recently a new position on said restrictions. In particular, the BR Patent Office has clarified that restrictive claims amendments (without broadening the scope of protection) would be acceptable under some conditions, namely the following:

  1. i) Amendments must be intended to solve objections raised by the first instance examiners originating the denial.
  2. ii) Amendments must be based on the set of claims in which the denial decision was based, that is, in the last claims examined. It is important highlight that restrictions supported only by the specification will not be accepted.

iii) The restrictions will be just accepted when derived from dependents claims or related independent claims.”

It has been also clarified that the new experimental data or documents can only be submitted in the appeal stage to support the argument of inventive step.

Appellants are given the chance to file supplementary petitions in order to adjust pending appeals according to the new rules until April 2, 2024, even though unfortunately  it is not clear yet whether retroactive applicability of same for appeals filed prior to April 2, 2024 will finally be effective (what certainly could be challenged before the Courts). In any case,  the BR Patent Office shall eventually issue further office actions for those appeals which do not meet requirements or solve the objections raised.

(II) The BR Patent Office has announced that the limit of 100 requests for PPH (Patent Prosecution Highway) based on positive IPRP results for 2024 has already been reached. Accordingly, no new PPH requests based on positive IPRP would be accepted during this year.

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