The Brazilian Patent and Trademark Office (INPI) has just issued two new rules (Ordinances 14 and 16) that will be in force from October 3rd, 2024, ruling patent prosecution and examination in our jurisdiction.
The most relevant changes can be briefly named in the following bullet points:
- The end of examination is now defined by the date wherein the decision is published in the Official Gazette (allowance, rejection or definitive shelving), no longer the date when the decision opinion was signed by the examiner or 30 days before the publication of the decision in the official gazette, whatever occurs at the latest.
- The patent application may be divided ex officio during the appeal stage;
- The marked-up version of the amendments to the patent application or a comparison chart must be submitted together with the clean amended version of the application;
- In case of a divisional application, it must be submitted a marked-up version of the amended set of claims of the parent case so that one can identify the texts removed from the claims of the parent application that were included in the divisional application as well as a comparison chart. Although precautionary divisional applications, which usually present a copy of the original claims, are not clearly prohibited in these new rules, we may face a direct rejection (with the right to appeal) regarding double protection.
The are other minor changes that are not worth mentioning at this moment, but we will address them in a case by case basis whenever the new rules might be applicable, but we are keen to clarify any inquiries you might have.
If you need more information about these new rules or have any questions, feel free to contact us at infomarketing@clarkemodet.com.
