Similar to other jurisdictions, divisional applications are also a useful tool when considering patent strategy in Brazil. The objective of this blog is to touch on the main points of the prosecution of divisional applications in Brazil and compare it with other jurisdictions, such as the prosecution before the EPO.
Divisional applications may be voluntarily filed in Brazil, and must satisfy the substantive requirements of the Brazilian IP Law on its own merits. Although a divisional application is considered an independent application and examined separately from its original case, it is worth noting that according to the Brazilian practice and issues related to double patenting, its examination should be carried on at the same time and usually by the same Examiner, meaning that the technical examination of the divisional application may start soon after its filing, so that both parent and divisional applications will be at the same prosecution level.
It also implies that the divisional applications will benefit from the priority and filing dates of the parent application, and when filing a divisional application in Brazil, all official fees (filing, examination and annuities fees, for example) already paid for the parent case should also be paid for the divisional.
When defining a flexible and fruitful strategy considering divisional applications in Brazil, it is very important to pay attention to the two distinct deadlines, i.e. the deadline to file a divisional application and the deadline that defines the broadness of the scope of protection.
Deadline to file a divisional application:
Firstly, regarding the deadline to file a divisional application, whilst the EPO clearly sets the deadlines for the filing of divisions, the Brazilian IP Law and practice is not so clear about it.
The Brazilian IP Law states in its Article 26 that divisional applications may be filed until the conclusion of the examination of the parent application, which is understood as being set by the date stated on the examiner’s conclusive report on the patentability (decision of allowance, rejection, or final dismissal of the parent application), or the thirtieth day preceding the publication of such report in the Brazilian Industrial Property Journal, whichever occurs last.
Differently from the prosecution before the EPO, for example, in Brazil there is no notice informing the intention to grant a patent, therefore, said deadline cannot be foreseen by that application, which in other words means that there is no pre-established deadline for filing divisional applications and, the chance to file a divisional application can suddenly be gone.
Deadline that defines the broadness of the scope of protection:
Secondly, the Brazilian PTO adopts a very strict position about amendments performed after the examination request (action that can only be performed up to 36 months from the filing date).
That is, amendments which result in broadening of the scope of protection and/or insertion of new claim categories in comparison to the claim set upon which the examination request was based, are not acceptable.
Furthermore, said strict positioning is also extrapolated to the divisional applications, meaning that the broadness of the scope of protection of a divisional application is governed by the broadness of scope of protection of the claim set upon which the examination request of the parent application was based.
Although this positioning can be compared with the position of the EPO concerning the filing of unsearched subject-matter in divisional applications, it is worth mentioning that the Brazilian PTO’s positioning is stricter since there is no alternative to overcome these issues, such as filing higher generation divisional applications, for example.
Thus, it is important to emphasise that the filing of divisional applications deriving from another divisional application (second generation divisional application) is not acceptable according to the current Brazilian IP Law and practice.
Therefore, aiming for a greater strategic flexibility, it is highly advisable to file divisional applications as soon as possible, preferably before the request of examination of the parent application.
If the filing of a divisional application at such an early stage is not desirable, one solution could be to maintain in the claim set of the original case a broad independent claim of each category that maybe fruitful for strategical interest in the future. However, this second strategy should be taken with a grain of salt since, as mentioned above, it is not possible to foresee when a decision of allowance will be published, especially in view of the fact that it can now occur fairly quickly due to the imminent end of the Brazilian backlog, in comparison to the recent past.
It is important to note that Article 6 of the Brazilian IP Law provides grounds for the prohibition of double patenting. Therefore, divisional applications in Brazil are examined regarding double patenting.
Although Article 6 of the Brazilian IP Law provides said grounds, the Brazilian PTO’s Guidelines and Rules are silent on this matter and the analysis is up to the Examiners. In general, double patenting may be characterised in Brazil for the species/genus configuration, that is, if a strict product claim is already comprised in a broad product claim, double patenting of the strict product may be pointed out.
Overcoming double patenting objections may not be easy. However, there are some strategies which can be used during the prosecution phase, such as redrafting the claims of the parent and/or divisional applications so that each application is related to a different embodiment, even if they have some matter overlapping, and to submit technical arguments explaining the differences between each application.
For this purpose, during the examination phase of the applications, it is also possible to include negative definitions in the claims to exclude subject matter already claimed in other application of the family, such as, for example: “1. A compound characterised in that it comprises the Markush formula X (…), with the proviso that the compound is not compound Y.”.
Certificate of addition
In view of the limitations of the divisional applications in Brazil, in some cases, the filing of a divisional may not be the best strategy or can even impossible to pursue. Therefore, it is important to bring other strategies into play, for example, the filing of certificate of addition, which can be done after the patent is granted.
The certificate of addition is somewhat similar to the USA Continuation in-part and is directed to the protection of improvements to inventions, which means it “allows introduction of new matter” to a certain degree, which may be helpful to secure a proper scope of protection.
The certificate of addition is an add-on to the patent, that is, it will have the same expiration date and, its effectiveness is intrinsically related to the patent to which it refers. In sum, the requirements for the certificate of addition are:
• It should be an improvement/development of the invention of the patent
• It must have a single inventive concept with the patent
• It does not require inventiveness in face of the patent
• Can be filed anytime during the lifetime of the patent.
Therefore, it can be a useful approach in situations where divisional applications do not fit properly.
What’s particularly interesting about this dispositive is that, in case the Brazilian PTO does not consider it to have the same inventive concept as the parent application to which it is related, the certificate of additional will be rejected, however, the applicant could then appeal and request it be turned into an independent patent.
Lastly, in the scenario wherein the patent suffers a post-grant opposition proceeding or a nullity action, the patentee could request the analysis of the certificate of addition to consider whether its substance is acceptable.
FICPI’s view and involvement
FICPI uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI Forums, Congress, committees and meetings are opportunities to gather insights from the international IP attorney community on any issue, whether it be practice-related or topics of patent and trade mark law.
Search for FICPI members in Brazil by navigating to the FICPI member directory and searching by country.
Article published on FICPI.