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Additional update in the proceedings of the Brazilian PTO when assessing patent applications at the appeal stage

By: Silvia Costa

March 14, 2024

The Brazilian PTO has altered and republished on February 27, 2024 the Opinion nº 3/2024 complementing the initially issued proceedings during the appeal phase (Opinion nº 19/2023 from December 2023 – to be in force as of April 02, 2024). Although revised, the republished document remains confusing and in certain aspects in contradiction with the previous opinion. On March 04, 2024, a guideline instructing how the appeals and administrative nullities will be examined was issued (Ordinance nº 7/2024), giving additional details on how this new understanding would be applied. After a meeting with the BRPTO on March 14, 2024, the IP associations informed that a new guideline would be published soon. In fact, on March 19, 2024 a new Ordinance (Nº 8/2024) was published, revoking the previous one (Ordinance nº 7/2024 of March 04, 2024). In summary, the appeal board will be focused on reassessing the decision of the first instance examiner based on the arguments and set of claims presented in response to the office actions issued by the first instance examiner.
 
Upon lodging an appeal before the BRPTO, the Appellant should bear in mind the following points:

1. Amendments to be performed when filing an appeal must be restrictive and expressly foreseen in dependent claims or arising from a combination of independent/interconnected claims. In this sense, restrictions arising from the specification, and which are not expressed in the rejected claims will not be accepted.
2. Additionally, the amendments submitted must be a logical restrictive derivation of the claim set object of the rejection.
3. Any subject matter removed from the claims during the 1st instance cannot be reintroduced to the claims to be submitted during the appeal stage.
4. Data or documents (like comparative tests or affidavits) presented solely to substantiate the arguments of inventive activity may be admitted at the appeal stage.
5. Requests to change the nature (from patent of invention to utility model, for example) will not be accepted in the 2nd instance, unless said change has already been requested by the Applicant during the 1st instance and has been unduly denied.

The Opinion nº 3/2024 as well as new Ordinance Nº 8/2024 ratifies that in cases of requirements that are not met or not adequately met, the 2nd instance examiner will understand that the opportunity to do so has been lost, and it will be necessary for the appellant to demonstrate the impossibility of complying with the requirement in the 1st instance. Such impossibility can be justified, for example, by asserting that the objection was not complied since it was:

a. insignificant (unnecessary) requirement, being an error of judgment;
b. an undue restriction, being an error of judgment;
c. not clear and the lack of clarification prevented the Applicant to understand the need for the requested restriction (insufficient motivation) – formal error;
d. a lack of clarity in the requirement – formal error, among others.

On the other hand, if a subject matter under examination was not properly addressed by the first instance examiner, the appeal board may either forward the appeal arguments back to the first instance examiner for a new substantive examination proceeding or move forward with the examination at the appeal stage if the appeal board examiners believe that they are able to carry out the examination.

Due to such restrictive proceedings in force as of April 02, 2024, upon replying to office actions within the first instance, it is important to realize that it may be the last opportunity to submit new arguments and voluntary amendments (as well as filing auxiliary requests when contesting the objections), should a rejecting decision be issued afterwards. Additionally, any excluded matter during the 1st instance deemed relevant to the Applicant must be saved in a precautionary divisional application, to avoid losing scope (item 3 above).

The new Ordinance Nº 8/2024 established that appeals arising from patent applications that received their first substantial technical opinions (preliminary office actions being excluded) before April 1, 2024 may be admitted, even without any adaptations to the to the newly outlined procedures, provided that the Appellant demonstrates why it was not possible to adapt the case (according to items a to d above, among others). Regarding the retroactive application of the new procedure to the pending Appeals filed before April 01, 2024, the Ordinance Nº 8/2024 remains unclear. Consequently, all appeals (pending or to be submitted) will need to justify its inability to adapt to the new procedures, to be analysed and decided by the BRPTO.

We believe that the retroactive application of the new rules to all pending appeals introduces legal uncertainty into the process, limiting the right to contradictory and ample defense of the Appellants during the appeal stage. As a result, we anticipate a rise in legal challenges questioning the legality of both Opinions nº 3/2024 and nº19/2023.

Should you have any questions or need any guidance in this new proceeding, please contact us at brj@clarkemodet.com.

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