In our alert released on December 28, 2023, we reported that the Brazilian PTO had published new rules on the limits and scope of administrative appeals of patent applications (to read this alert, click here).
On February 27, 2024, the Brazilian PTO published supplementary guidelines aiming to better clarify which actions will continue to be allowed during the appellate stage and which ones now fall within the administrative preclusion doctrine, to wit:
- Restrictive amendments will be analyzed by the Appeal Board to confirm if they “imply in a new request made in the appeal level”. In the negative, restrictive amendments may be allowed to obviate objections raised during the first level examination, provided that:
- The Applicant establishes a causal link between the proposed amendments to the claim set and the first level examination objection;
- The amendments are restrictive logical derivations of the rejected claim set;
- The proposed restrictions must have been expressly contained in the dependent claims or arising from the combination of independent/interconnected claims. Restrictions originating from the specification, which are not expressly contained in the rejected claim set, will not be accepted; and
- No changes of nature (g., from patent of invention to utility model) will be allowed in the appeal level, unless said change was already requested by the Applicant in the first level examination and unduly denied.
- Arguments and evidence to clarify and demonstrate the technical effect of the invention and/or support other allegations will be admitted, being paramount that there be no innovation on appeal proceedings and that such data or documents serve only to consubstantiate the inventive activity argumentation.
It was further established that the preclusion principle will be applied as a rule where the requirements made during the first level examination were partially or unsatisfactorily complied with. The exception is when Appellant successfully demonstrates, based on evidence, the reasons which hindered the compliance with the office action in the first level, in line with the provisions of Article 221 of the Brazilian Industrial Property Law. In this case, the Board of Appeals will decide whether the case will return to the first examination level or if the documents will be analyzed directly by them.
Although these complementary rules are still limitative, they sounded as a relief to IP practitioners, as the previous rules, if literally interpreted, were excessively restrictive, since any kind of innovation (e.g., amended claims or arguments not presented at the first level examination) within appellate proceedings would not be permitted.
Another key factor of the supplementary guidelines is that they did not alter the new guidelines’ applicability to the appeals filed under the old guidelines. We understand that this change of rules mid-procedure is illegal for a plethora of reasons and is subject to judicial review. That is why we suggest reviewing all pending appeals to study the best avenue for optimal patent protection.
We are following up very closely the developments of this matter and will inform our clients as soon as we have any news to report.
For further clarification and assistance on this matter, please contact us at patents@murtagoyanes.com.br.