The Court of Appeals for the Second Circuit (TRF-2), in Rio de Janeiro, has upheld a lower court ruling that invalidated the Brazilian Patent and Trademark Office’s (INPI) rejection of a divisional patent application filed by pharmaceutical company Wyeth Inc.
The case involved patent application PI 9917687-4, which originated from a 1999 filing having 22 claims originally. Wyeth filed a divisional application restructuring the claims into Swiss-type format, which focuses on the use of compounds in drug preparation rather than therapeutic methods themselves. Despite this format being accepted by its guidelines, INPI rejected the divisional application, arguing that the amendments were made untimely and exceeded the scope of the original application, thereby violating Sections 32 and 26 of the Patent Statute, respectively.
Wyeth challenged the rejection in court, arguing that the divisional application properly met all legal requirements and did not exceed the subject matter of the parent application.
During the course of this lawsuit, a court-appointed expert confirmed that the divisional application did not exceed the originally disclosed subject matter and that the Swiss-type claim formulation actually restricted, rather than expanded, the scope of protection. Based on these expert conclusions, the trial court ruled in favor of the Plaintiff, invalidating INPI’s rejection of the patent application.
In turn, INPI appealed from the merits decision, but TRF2 upheld it, confirming that the conversion to a Swiss-type format did not violate legal requirements and that the divisional application was properly filed.
In summary, while INPI could potentially appeal to higher courts, this precedent highlights the unlawful nature of the patent office’s excessively restrictive approach sometimes taken to claim amendments and divisional applications, providing important guidance for pharmaceutical companies navigating Brazil’s patent system.
Source: Appeal #0225909-95.2017.4.02.5101, First Specialized Panel, Federal Court of Appeals for the 2nd Circuit.
Authors: Viviane Kinisawa. Paulo Bianco e Estela Alves.