Recent changes in patent applications in Brazil

We would like to briefly inform you on the following recent changes implemented by the Brazilian Patent Office

  • As of January 1, 2024, technical examination of patent applications will be done by the BRPO following the date of the examination request instead of the patent filing date. Accordingly, in order to expedite prosecution of a patent applications in Brazil, it would be advisable to request technical examination as soon as possible after filing the application. In this sense and taking into account the current backlog of work existing at the BRPO, technical examination may be expected to be completed aprox. 2 years after requesting same.

 

  • In accordance with a new Rule published by the BRPO on December 12, 2023 subsequently amended on December 26, 2023, the Board of Appels of the BRPO will no longer accept amendments of the application text during the administrative appeal stage. Still pending clarification from the BRPO, it appears that even amendments submitted narrowing the scope of the claims shall not be accepted. This restrictive measure is to be implemented as of April 2, 2024. In addition, all pending appeals are supposed to comply with this new rule so that the BRPO shall allow the appellants to file a supplementary petition adjusting their appeals as originally submitted in order to adapt same to this new scenario (for instance, reinforcing allegations in support of the claim set rejected after examination) by April 2, 2024. At this stage we cannot assert whether retroactive applicability of this rule will finally be effective or not but we consider highly questionable that the BRPO could apply same to appeals filed prior to entry into force of the same and certainly it could be challenged before the Courts. We expect the BRPO to promptly clarify this issue so further developments will be timely reported.

 

  • New Rules regarding payment of annuity fees have been published by the BR Patent Office on December 19, 2023. According to same, payment of maintenance fees is possible up to 3 month in advance of the opening payment period, namely the anniversary filing date (or international filing date in case of entries into national phase of PCT applications) as of January 1, 2024, provided that all previous annuities have been timely paid. On the other hand, when effecting payment of a certain annuity fee and in case that the previous annuity is still pending, the system will automatically apply the current payment to the outstanding annuity and will request the applicant to pay any eventual amount still due.

 

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