IP rules and regulations have a certain international uniformity. In several countries the main patentability requirements are almost identical due to international agreements such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Despite the similarities between patentability requirements worldwide, each country has specific rules that can differ wildly from international standards.
With regard to patent prosecution, Brazil has its own regulations, which may confuse practitioners and applicants who are more used to the US patent system.
This article briefly explains some of the problematic and advantageous points of Brazilian practice.
Preliminary office actions
In an effort to tackle the backlog, the Brazilian PTO started the preliminary office action program in 2019. According to this program the examiner issues a simplified office action containing a list of the prior art cited during the examination of counterpart applications/patents in other jurisdictions without comments or analysis. Then, the applicant has 90 days to file a response; otherwise the application is lapsed with no right to appeal. If a response is filed, the examination procedure follows, and the examiner may issue a subsequent regular office action or even a notice of allowance.
The program aims to reduce the backlog and accelerate examination by removing applications from the examination line if the applicant fails to respond to the office action and by incentivizing the applicants to conform the claims to those that have already been allowed in other jurisdictions.
Unlike the expedited examination programs, in which the applicant must take an action and file a request to accelerate the examination, the preliminary office action program is an initiative of the Brazilian PTO. The Patent Office will issue said preliminary office actions to all applications that qualify for the program, i.e., applications filed until December 31, 2017 whose examination has not yet begun, that are not participating in any other fast-track programs and that have no third-party observations filed (“pre-grant opposition”).
On average, the Brazilian PTO takes 10 months to conclude the examination proceedings after a preliminary office action is issued. The allowance rate is at around 93% and 75% of patents are granted within further office actions.
Also, the preliminary office action program has been responsible for reducing the backlog by 66%.
Although the Brazilian PTO has dramatically reduced the backlog, the average time to obtain patent protection in Brazil is still between 6 and 7 years. In addition to this, it should be noted that the minimum protection term of 10 years counted from the grant no longer applies due to a decision by the Brazilian Supreme Court in May 2021. Therefore, all invention patents are valid for 20 years from the filing date, while utility model patents are valid for 15 years from the filing date.
To minimize the extent and effects of the backlog, the Brazilian PTO provides several expedited examination programs, including:
• Patent Prosecution Highway (PPH) agreements signed with main patent offices around the world;
• Green patents program for applications relating to environmentally friendly inventions;
• A program for technologies available in the Brazilian market, i.e., for inventions/utility models where the claimed subject-matter is commercialized, used or produced in Brazil;
• A health products program for applications relating to products, pharmaceutical processes, equipment and materials relating to public health;
• A program focused on technologies for treatment of COVID-19;
• A potential infringement program for situations where a third party is using the invention cited In the application; and
• An elderly applicant program for applicants aged 60 or above.
It is important to highlight that the PPH programs are “tech neutral” since 2019, which means that applications from all technical fields can participate in the program. Also, the most recent PPH rules state that the office of the first filing (OFF) can be different from the office of earlier examination (OEE), provided that both OFF and OEE have PPH agreements signed with the Brazilian PTO. For example, it is possible to submit a PPH request in Brazil based on a patent granted by the Japanese PTO (OEE) with a priority filed before the European PTO (OFF).
Generally speaking, the requirements to use the expedited examination programs in Brazil are not strict. Most programs require only a request in which the applicant provides a brief explanation on why the application should be considered eligible for participating in the program. In addition, the programs are available along the entire prosecution process and can be used whenever necessary – except the PPH which can only be requested before the substantial examination begins.
In summary, the Brazilian PTO’s programs are highly effective – following a request to participate, it takes approximately 12 months to complete the examination process and have the patent granted.
Voluntary modifications and examination request
Another issue that usually raises doubts on Brazilian practice is the possibility of making voluntary amendments. In Brazil, a patent application may be modified until the end of the examination procedure (including appeals). However, the types of amendment are regulated after the examination request is filed.
Before filing an examination request, applicants may modify the patent application. This includes:
• Adding or cancelling claims;
• Adjusting claim categories;
• Adding or removing features; and
• Re-writing entire claims.
However, once examination is requested (which must be done within 36 months from the filing date) it is impossible to increase the claim’s scope and several restrictions apply. In other words, the request for examination sets the maximum scope of protection the applicant will be able to obtain. From that stage on, it is only possible to maintain or to reduce the scope of the claims. To give some examples, from the request for examination, applicants are prohibited from:
• Removing features from the claims;
• Changing the category of a claim; or
• Adding new independent claims.
Nevertheless, applicants may:
• Include dependent claims;
• Include features in independent or dependent claims based on the specification and other claims (drawings do not provide support for the claims in Brazil); and
• Remove features, words or phrases for the purpose of overcoming lack of clarity.
Under Brazilian patent statutes, a patent application may be divided up until the end of the examination procedure. However, the Brazilian PTO has clarified that patent applications may be divided only before a notice of allowance or a pre-appeal rejection is issued. Therefore, if an appeal is filed against a rejection decision, the applicant may not divide the patent application. Many patent attorneys agree that this is illegal and should be annulled because the civil law system in Brazil establishes that the rules issued by a government agency cannot be contrary to federal laws, which are created and approved by Congress.
However, if the applicant has no interest in bringing a challenge on the timing for filing a divisional application before the Brazilian Courts (which is possible and plaintiffs have prevailed in several cases), then the Brazilian PTO Rule must be observed and the divisional application must be filed before the appellate phase or before a notice of allowance is issued.
Before requesting examination of the parent application, applicants may file a divisional application and amend the claims of both the parent and divisional application as they choose. However, if a divisional application is filed after the request for examination of the parent application, the claims of the divisional must not be broader than the claims of the main application.
As mentioned, the examination request sets the maximum scope of protection that is possible to obtain and it also applies and extends to divisional applications filed after the request for examination.
From the points discussed above, we hope that we have clarified some of the main Brazilian prosecution particularities and that such information is useful for users of the Brazilian patent system.