Friday, February 23 2024   \  Published by Daniel.

The Brazilian PTO has announced new rules governing patent applications

The Brazilian PTO has announced new rules governing patent applications

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. Read more

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