Further to our communications of The Brazilian PTO has announced new rules governing patent applications and Amendments and Supplementary Experimental Data During the Appeal Phase, we report that the Brazilian PTO published yesterday a new ordinance to provide clarifications on the submission of amendments and supplementary experimental data in the appeal phase (Ordinance # 10 of March 08, 2024). This new ordinance revokes the previous one, which was published just 3 weeks ago (Ordinance # 7 of March 04, 2024), and is the result of discussions between the Brazilian PTO and Brazilian IP associations, whose goal was trying to achieve a coherent understanding of the new rules.
Such new rules for amendments and acceptance of experimental data during the appeal phase remain the same and will be effective on April 2, 2024 with retroactive effects for pending appeals. Just to recap, the new rules limit the possibility of presenting amendments and supporting data at the appeal phase, as they now must be related or intended to address objections raised by first instance examiners, that is, objections raised before the first instance rejection; and amendments must be limited to the subject matter of the claim set in which the rejection decision was based.
The Brazilian PTO reiterated (a) the possibility of submitting a petition until April 2, 2024 to adjust pending appeals to the new rules, and (b) the possibility of issuing office actions for pending appeals that do not comply with the new rules and for which said adjustment petition is not submitted by the deadline. Even though the Brazilian PTO mentioned again that office actions may be issued, it is unclear whether it will be possible to submit claim amendments in response to such office actions. In view of this, filing the adjustment brief until April 2, 2024 is still advisable whenever amending the claims to comply with the new rules is possible.
When the adjustment brief is not filed until April 2, 2024 and it is not possible to amend the claims to comply with the new rules, the new ordinance published today mentions that the Brazilian PTO will issue an office action, in response to which applicants may present justifications to prove that complying with the new rules is not technically possible. According to the new ordinance, such justifications may be accepted, even though the criteria for this is unclear.
Considering the time limit of April 2, 2024 for filing a supplementary petition for pending appeals, please let us know in case you want us to review any pending appeals and/or guide you with the best approach to be followed. 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.