Amendments and Supplementary Experimental Data During the Appeal Phase

by | Mar 20, 2024 | Client Alert, Patent

Further to our communication of December 2023, a decision was published today by Mr. Julio Cesar Moreira, President of the Brazilian PTO, regarding the submission of amendments and supplementary experimental data during the appeal phase (administrative second instance).

This decision results from an inquiry submitted by the General Coordination of Appeals and Administrative Nullity Proceedings (CGREC) to the PTO’s General Counsel (Opinion # 0003/2024/CGPI/PFE-INPI/PGF/AGU). In summary, Mr. Moreira agreed with its General Counsel’s interpretation on this matter and decided to complement the previously discussed rules, changing the PTO’s interpretation regarding the acceptance of amendments and experimental data, as outlined below:

  • Acceptance of amendments at the appellate phase: any amendments will be duly analyzed, and the appeal board will assess whether the amendments are restrictive, that is, if the amendments are only aiming at limiting the scope of the claims, without changing or broadening the scope of protection.

If amendments are restrictive, they will be accepted at the appellate stage, as far as they meet the following criteria:

  • amendments must be related or intended to address objections raised by first instance examiners, that is, objections raised before the first instance rejection;
  • amendments must be limited to the subject matter of the claim set in which the rejection decision was based, considering the matter already specified in the independent and dependent claims; and
  • amendments based on subject matter only disclosed in the specification, that is, that were not part of the claim set for which the rejection decision was based, will not be accepted, even if such amendment only aims at narrowing the scope of the claims.

Amendments will be addressed in a general manner, without making a distinction between main and auxiliary claim sets.

The Brazilian PTO determines that amendments aimed at complying with requirements raised by the first instance examiners, such as requests for the exclusion of claims by means of an office action previous published, will not be accepted.

  • Acceptance of experimental data in the appellate phase: results/tests/trials will be accepted for analysis if they are intended to prove nonobviousness (inventive activity).

As the present decision complements the previous opinion, the Brazilian PTO has allowed appellants to file a petition until April 2, 2024 adjusting their pending appeals according to the new rules. We understand that the current scenario should not affect pending appeals that were filed prior to the publication of these new rules. However, the Brazilian PTO insists that the new rules will be applied to pending appeals, so please let us know in case you want us to review any pending appeals to verify if any adaptation is viable or could be useful.

In any case, we reiterate that this new position from the Brazilian PTO may be challenged before Courts, and we have a dedicated team to assist with these matters if necessary.

Please contact us in case you have any questions, or if you want us to review a pending matter in order to discuss the best course of action for a particular case. We will be glad to assist you.


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