The Brazilian Patent and Trademark Office (BPTO) published on February 27, 2024 clarifications on the rules previously published on December 12, 2023 on the analysis of appeals in patent applications.

In short, these rules establish that:

1. amendments to the claims are allowed at the second instance (during the appeal phase) only for narrowing down the scope of claims subject to the compliance of the following requirements:

a) amendments to the claims must effectively narrow the scope of the subject matter, which ultimately depends on the technical analysis of the Examiner;

b) amendments to the claims must be limited by the claims themselves – restrictions based on the specification will not be allowed;

c) amendments to the claims must have a connection with the arguments raised by the Examiner in the decision that rejected the application;

d) changes in the nature of the application (invention to utility model) will not be permitted if they have not been discussed in the first instance.

2. tests and data to clarify the presence of inventive step and/or support claims will be accepted, provided that there is no addition of new matter.

3. issues that have been abandoned or not replied to in first instance cannot be raised in the second instance.

These new rules will become effective as of April 2, 2024. Therefore, in principle all patent applications currently in the appeal phase may be subject of amendments to the claims in order to be compliant with the new rules.

Our Intellectual Property team is at your entire disposal for any requirements you may have on this or any other IP issue, via the e-mail pi@smabr.com or telephone +55 11 31462400.