BRPTO's Official Gazette #2800, published this September 3, 2024, announced new Examination Guidelines for Patent Applications – Content of Patent Applications (Block I) – as per Ordinance #16, dated September 2, 2024. Additionally, general rules were established regarding formalities and content for the submission and filing of patent applications and addition certificates. These rules also cover aspects such as priority, grace period, divisional applications, and the submission of amendments, as detailed in Ordinance #14, dated August 29, 2024.

The new rules will come into effect in 30 days, that is, from October 3, 2024, respectively repealing and replacing Rule #124 and Normative Instructions #30 and #31, all dated December 4, 2013.

The main changes concern the division of patent applications. According to Ordinance #14/2024, the voluntary division of an application will be allowed only until the decision of the substantive examination of the original application on the first administrative instance is published. However, this time limitation does not apply to divisional applications proposed by the BRPTO.

For this purpose, the BRPTO considers the “original application” as the first filed application.

The new BRPTO regulation introduces significant changes, particularly by extending the deadline for filing divisional patent applications, at least when requested through office actions by the BRPTO. In such cases, the division will be permitted even after the substantive examination, at the appellate level, aligning with two rulings from 2023 by the 1st Panel of the Federal Court of Appeals for the 2nd Circuit (“TRF-2”) (Lawsuits no. 5103078-18.2021.4.02.5101 and no. 5103093-84.2021.4.02.5101).

However, the new provision is likely to raise questions regarding voluntary divisions. This is because, in addition to restricting them during the BRPTO's substantive examination (which the Brazilian Patent Statute itself does not do, as Article 26 establishes the term as “until the end of the examination” without limiting it to the Office’s substantive examination), the new rule also states that the term ends on the “date of publication of the decision of grant, rejection, or abandonment.” In other words, taking the norm at face value, the term would end on the very date when, due to the publication of the decision, the applicant becomes aware of the term itself, which coincides with the end of the substantive examination. Thus, the concern previously identified in the earlier rule (Normative Instruction #30/2013) regarding the difficulty of filing divisional patent applications persists, due to the lack of transparency and public awareness of the final term.

Presumably, in cases of voluntary division after the substantive examination decision, it will still be necessary to turn to the judiciary to seek a combined interpretation of the new rule with Article 224 of the Brazilian Patent Statute, which establishes a general term of 60 days for the performance of actions when there is no explicit stipulation in the law. This combined interpretation has also been confirmed in discussions within the scope of the two aforementioned TRF-2 precedents and is consistent with two other Court decisions that affirmed the possibility of submitting divisional applications during the entire appeal phase.

For more details, access the full content of Ordinance #14/2024 and Ordinance #16/2024 (in Portuguese).

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