Articles and Information

The Brazilian Patent and Trademark Office (Brazilian PTO) published Opinion No. 00016/2023 in its Official Bulletin No. 2762 of December 12, 2023, introducing changes related to the acceptance of amendments during the appeal phase of patent applications.

The Opinion establishes that amendments to patent applications will not be accepted in the appeal phase (2nd administrative level). The Opinion considers that, due to administrative closure, once the 1st phase has been completed the patent applicant will not be able to make any changes to the patent application, either to restrict, to better define or clarify it. This ultimately limits a right of the patent applicant.

The new conditions, are extremely questionable and unnecessarily restrictive, limiting the scope of appeals as provided for by the 1st paragraph of article 212 of the Industrial Property Law, which reads: “Appeals shall be received with full suspensive and retroactive effects, applying all relevant provisions to the first-instance examination, as applicable.”

Currently, amendments to patent applications are allowed, but limited to their initial content to maintain the unity of the invention. During the analysis of appeals, a re-examination is conducted, enabling a new prior art search. This procedure allows the applicant to reduce the scope of protection, if necessary, in order to comply with and address any raised objections.

The Brazilian PTO intends to introduce this new interpretation limiting the appeal phase to the analysis of the arguments submitted within the appeal, without the possibility of introducing new amendments in the appeal phase.

This Opinion has received normative effect and will be applied within 60 days of its publication. Therefore, it is expected to be in force from February 10, 2024, onwards.

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