Important Changes in Brazil’s Patent Application Process

Updates in Brazilian Patent Procedures: Insights into Recent Regulatory Changes

Brazilian PTO published an opinion with normative effect determining that restrictive amendments to circumvent the objections raised in the first instance patent examination may be accepted in the second instance, if they do not imply a new claim and upon compliance with the following 4 new conditions published in the Bulletin (RPI) #2773, published on February 27, 2024:

  1. Amendments (or modifications) to the claim framework must necessarily have a causal link with the obstacles identified by the first instance, that is, it must be clear that the changes are related to the reasons for rejecting the patent application.
  1. Only modifications that are logically restrictive derivations of that table subject to rejection may be presented. Materials abandoned in the first instance cannot be recovered, based on this condition.
  1. Only restrictions that are expressly provided for in dependent claims, or arising from the combination of independent/interconnected claims, will be permitted. Restrictions based on the descriptive report and that are not expressed in the contested claim framework will no longer be permitted. An excipient, for example, that was only included in the DR cannot be used to restrict the QR if it is not described in a dependent claim.
  1. Requests for changes in nature will not be permitted in the second instance, unless said change has already been requested by the applicant in the first instance and has been duly denied.

The possibility of accepting the amendments was presented through Opinion 003/2024/CGPI/PFE-INPI/PGF/AGU, complementary to Opinion 0019/2023/CGPI/PFE-INPI/PGF/AGU. The above rules were made public in the decision-making order of President Julio Cesar Castelo Branco.

Regarding the possibility of presenting data or documents in the second instance, it was clarified that these can be presented only to support the argument of inventive activity.

The decision order published on 02/27/2024 also informs that requirements that are not met or met in an unsatisfactory manner will imply estoppel, unless the appellant demonstrates, with support and evidence, the impossibility of complying with the requirement in the first instance.

Latest Updates on PPH Program for 2024

The INPI reports that it is close to reaching the limit of 100 applications per annual cycle for participation in phase IV of the PPH Pilot Project, based on the results of the PCT.

Once the limit is reached, no new applications will be accepted for this modality in 2024.

This limit is in accordance with article 5⁰, item IV, of INPI/PR Ordinance No. 78, dated December 16, 2022.

Source: https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/limite-de-requerimentos-de-pedido-de-patente-pelo-pph-pct-em-2024

 

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