Applicants have a term of three years counted from the filing date of a patent application to request its substantive examination in Brazil. Due to the country's historical backlog of patent applications waiting to be examined, the Brazilian Patent Office (BRPTO) has always ordered the applications based on their filing dates, and not on the dates of the examination request. As a consequence, the request for examination never had an impact on how fast applications moved within the BRPTO.
Now that the backlog problem is controlled and the BRPTO is approaching the average backlog of other patent offices in the world, it was anticipated that a change in the order of applications pending examination in Brazil could occur. As of January 1, 2024, the BRPTO indeed started examining patent applications based no longer on the filing date but rather on the date substantive examination was requested. This is an important change in the BRPTO's practice as it opens the possibility of expediting patent examination by anticipating the examination request.
Nonetheless, Applicants must still be very careful when deciding when to request examination in Brazil, since that will set a limitation for voluntary amendments to the claims. According to the BRPTO, amendments to the claims, after examination is requested, can only be accepted if they result in a restriction of the claimed protection. Addition of new claim categories or removal of features of an independent claim are examples of amendments that will not be accepted after the examination request, even if in response to an office action.
Surprisingly enough, the BRPTO applies those limitations to divisional applications as well. That is to say, any attempt to claim a broader matter in a divisional application, after examination is requested in the parent application, will be rejected. In this situation, a divisional application must be limited to the claims of the parent application at the time of the examination request.
Said limitations always posed Applicants in Brazil some questions as to how to proceed.
A first advisable action is to keep the claims as broad as possible and add as many claims as needed prior to requesting examination. Needless to say that a careful revision of the claims must be made to ensure that they comply with the Brazilian practice, particularly when it comes to unpatentable subject matter. To stick with one example only, methods of treatment must be drafted as swiss-type claims in Brazil. If Applicants fail to perform this correction prior to requesting examination, then the application will be lost.
The drawback of this first approach is ending up with higher examination fees – official examination fees depend on the number of claims in the patent application – and with more office actions to correctly limit the scope of protection in view of prior art. However, the benefits of not being in a position of not having proper protection, or no protection at all, should outweigh those drawbacks.
A second advisable approach has always been waiting to the end of the three-year term to request examination. This would give Applicants more time to decide which claims are desired and potentially in view of examination results from other patent offices in the same patent family. However, as mentioned above, this logic changed. Now, Applicants must balance the benefits of having a faster examination versus keeping the possibility of amending the claims for as long as possible.
Inadvertently or not, many Applicants request examination upon filing a patent application in Brazil. While they may experience a faster examination, they risk the scope of protection to be obtained.
A new update adds another variable into this equation, and it concerns appeals. The possibility of appealing to any decision of the BRPTO has always been widely available. However, as of April 2, 2024, the BRPTO is only considering appeals that relate to discussions that already occurred during the prosecution of a patent application. In sum, it is no longer possible to use appeals to discuss patentability of a different subject matter. This has a huge impact on the claims.
The most common scenario whenever a rejection is faced, is for Applicants to further amend the claims, restricting the claimed object in an appeal. It was unclear whether this would characterize a different subject matter when discussions concerning the new Rules started at the end of 2023. The BRPTO eventually clarified that amendments resulting a restricted protection could be still accepted in an appeal, but as long as the restriction comes from claimed matter. In practice, an independent claim can still be restricted by incorporating matter from a previously existing claim, but not by incorporating unclaimed matter from the specification. This puts an additional pressure in the decision of what to claim.
The advisable action here would be thinking carefully of which subject matter disclosed in the specification could be useful in an appeal. Whenever an office action on the merits is received, Applicants should consider adding said subject matter in the set of claims as dependent claims, as an anticipation of a potential appeal. As previously discussed, those amendments would still be possible even after the examination request.
Another possibility would be considering filing a divisional. According to our Patent Statute, a patent application can be divided until the end of examination of the parent case. The problem is properly defining when examination will end.
The BRPTO provides a very unclear definition of "end of examination". According to the BRPTO, end of examination is the date of the technical opinion accepting or rejecting the application or 30 days before the publication of the acceptance of rejection of the application, whichever occurs last. Since it is impossible to predict when such technical opinion will be dated, in practice no one really knows when end of examination happens in Brazil.
So, after requesting examination, Applicants must be very attentive to the possibility of claiming previously unclaimed matter and to the possibility of filing divisionals.
While the rationale concerning the new Rules governing appeals is understandable, our opinion is that they should only be implemented after a revision of the examination procedures. Applicants should have more chances to file responses and the liberty to disagree with the Examiner's opinions without risking an immediate rejecting decision. Further, a clear definition of "end of examination" should be finally provided.
For the time being, a huge pressure is set in both ends of patent prosecution: when requesting examination; and when rejection occurs. As discussed above, Applicants should not use an "autopilot" for patent prosecution in Brazil. Careful steps must be taken so as to avoid undesired consequences.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.