The Brazilian PTO has announced new rules governing patent applications, basically creating further restrictions to claim amendments and auxiliary claim sets filed at the appellate stage. These new rules are expected to come into force on April 2, 2024. According to the new rules published on December 12, 2023 and amended on December 26, 2023, the appeal board will no longer analyze amendments and auxiliary claim sets that had not been originally proposed during the first instance examination – while it is not perfectly clear, it seems that even amendments or auxiliary claim sets filed during the appellate stage merely to narrow the scope of the claims will no longer be accepted. In practice, the new rules might limit the scope of appeals to discussing the merits of the rejection decision only, without allowing the discussion or addition of any matter that had not been previously submitted or addressed during lower instance prosecution.
The new rules overturn years of consolidated practice, as the appeal board of the Brazilian PTO used to analyze and accept restrictive amendments and auxiliary claim sets. There has been no formal challenges to these new rules until now, and we cannot assert whether this new understanding will be final or not. Nevertheless, in view of the new rules, we recommend our clients and associates to present all viable amendments and auxiliary claim sets before the appellate stage, in order to make sure that they will be taken into consideration at the appellate stage in case of a first instance rejection.
For pending appeals, the Brazilian PTO has allowed appellants to file a petition adjusting their terms in order to adapt these pending appeals to comply with the new rules. The deadline for filing such petition is April 2, 2024. In view of that, 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, such as reinforcing our arguments in support of the claim set that was rejected during the first instance examination, for example. For pending appeals that heavily rely on amendments or auxiliary claim sets that were filed during the appellate stage, we recommend filing a petition challenging the applicability of the new rules by the appeal board, since they should not affect pending appeals filed prior to new rules becoming in force. The Brazilian PTO might issue office actions for pending appeals that were filed in accordance with the former practice.
Since it is highly questionable if the Brazil PTO could apply the new rules to appeals filed in the past according to former practice, the dismissal or rejection of these appeals by the Brazilian PTO based on the new rules may be challenged before a court of law.
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.