The objective of this article is to provide an overview of the divisional patent practice in Brazil focusing on the strategies that must be devised in the patent prosecution so as to allow the appropriate scope of protection at a later stage.

Throughout the text below we will draw your attention to the fact that the date when the examination fees are settled will have a relevant impact on the further prosecution of the parent case, influencing in the voluntary amendment and divisional practices. Therefore, before moving forward with the request for examination, the Applicant must have a clear strategy about the set of claims to be submitted for examination.

The divisional patent practice in Brazil is more restrictive than in many other jurisdictions. Indeed, the guidelines adopted by the Brazilian Patent and Trademark Office (INPI) are more restrictive than what is set forth in the Brazilian Industrial Property Law.

According to the Brazilian Industrial Property Law, divisionals may be filed until the end of examination provided that the divisional application is supported by the original application and no novel subject matter is added thereto. However, the examination guidelines created a constricted scenario.

According to the current examination rules in force at the INPI, the so-called end of examination is deemed to be the date when either the allowance, rejecting or definitive abandon decision is published in the Official Gazette.

Therefore, a divisional application will not be accepted at the appeal stage, unless the appeal board asks the applicant to proceed with the division. Therefore, if the applicant   shall not wait for a rejecting decision in order to make a decision about filing a divisional.

The divisional practice varies completely if the divisional is filed before or after the request for examination. Please take into account that in Brazil, the examination fees must be settled within a period of 3 years counted from the filing date (international filing date for PCT national phases).

Since the examiners are assigned to the patent applications according to the request for examination date instead of the filing date, the applicant may be led to pay the examination fees as soon as possible so as to have a faster prosecution. The applicant must balance the advantage of a faster prosecution vis-á-vis the risk of missing the occasion to voluntarily amend the application.  

Procedures before the request for examination

The set of claims of a divisional application filed before the request for examination date of the parent case can be drafted in an unrestricted manner, being allowed the inclusion of new features and claim categories provided that all amendments are duly supported by the parent application as originally filed. Double patenting shall be avoided since it is not allowed in the Brazilian jurisdiction.

This procedure follows exactly what is defined in article 26 of the Brazilian Industrial Property Law, that is non-claimed subject matter initially disclosed in the specification can be introduced in the claims of the divisional application.

Procedures after the request for examination

 According to the current rules of the INPI, after requesting for examination the set of claims cannot be voluntarily amended, unless it is intended either to correct minor errors that will not modify the scope of protection or to narrow the scope of protection.

Such limitation on the amendments also affects the scope of the divisionals. Any divisional application must refer to the set of claims of the parent case for which the examination was requested for. Accordingly, the claims of the divisional must be the claims withdrawn from the parent case. The amendment of the set of claims so as to include the claims to be filed in a subsequent divisional is not possible, due to the examination request milestone.

In our opinion the current guidelines of the INPI are contrary to the Brazilian Industrial Property Law, since it is not set forth in said law that the divisional claims should be delimited by the claims of the parent case.

Strategies to be followed

In light of the restrictions imposed by the Brazilian PTO, we propose the following actions to be addressed prior to proceed with the request for examination.

• We recommend keeping a broad set of claims encompassing all the embodiments and features of the invention so as to allow the division of the application at a later stage. It is worth highlighting that the drawback relies on the fact that examination costs are fixed until 10 claims and vary substantially according to the total number of exceeding claims.
• When replying to an office action, consider filing divisionals when necessary, since it will not be possible if the application is rejected afterwards.
• Do not divide the application when the expedite examination is requested since it may lead to the annulment of the accelerated procedure of the parent case.

Final Remarks

While prosecuting in Brazil it is important to notice that the Brazilian PTO is very restrictive concerning the claims that are included in the divisional application. Keeping embodiments and features of the invention in the specification and not in the claims to be examined in the parent case is not an appropriate approach according to the Brazilian practice, since they will not be accepted neither in the divisionals to be filed nor in the parent case if carried out after the request for examination date.

The key take-away from this article is that before paying the examination fees, one should assess the pending set of claims and think comprehensively about the inclusion of new claims taking into account a future amendment or divisional to be filed as well as the involved costs in this connection.