IDS Agenda – “Relevant Issues on Patent Application Division”

IDS Agenda – “Relevant Issues on Patent Application Division”

The Dannemann Siemsen Institute (IDS) has just made available on its website the complete content of the webinar “IDS Agenda – Relevant Issues on Patent Application Division,” recently conducted. Among the discussed topics was the relevance of the patent application division procedure for fostering innovation, the scope and extent of the patent application division request, the deadline for submitting this division request, and the treatment of the matter by the National Institute of Industrial Property (INPI) and the Courts.

The meeting was opened by IDS Coordinator Patricia Porto and moderated by IDS Counselor Mauricio Teixeira Desiderio. It featured speakers such as Federal Judge Wanderley Sanan Dantas, intellectual property analyst at EMBRAPA Janaína Tomazoni Santos, and Dannemann Siemsen partner Bernardo Marinho Fontes Alexandre.

Mauricio Desiderio began his moderation by providing context on the topic of patent application division, stating that the main question is defining the time limit for depositing a divided patent application with the INPI. He explained that there are still many controversies on the subject and emphasized the importance of having a representative from the judiciary, a representative from the national innovative industry, and a representative from the end user at the event.

He then handed over to Janaína Tomazoni to answer the question: What is the relevance of the possibility of dividing a patent application during its processing for innovative companies? In her response, Janaína spoke about the importance of the patent division mechanism, especially for national innovative companies, for protecting inventions in the face of regulations that are not widely known to all users, enabling the granting of patents and accelerating the availability of technological innovations to society.

Next, Bernardo Marinho explained a bit about the administrative process of patent application examination, highlighting that the division request is an important tool in the pursuit of a patent and discussed the advantages and challenges of this procedure from a technical point of view. He clarified that the patent application process is not linear but multilateral, widely contradictory, and dialectical.

Bernardo Marinho complemented his explanation with a statistic regarding the approval and rejection rates of patent applications by INPI from 2013 to 2020. According to the graphs, 87% of INPI’s rejection decisions occur with a single intermediate opinion. He explained that this shows the strict judgment of the organization, as there is no partial approval. Therefore, he emphasized that division is a way to fragment the discussion, not compromising the protection of one part of the patent.

Controversial points, according to Bernardo Marinho, exist regarding when the end of the examination would be. For him, the deadline for proposing a division request should occur at the publication of the decision that judges the administrative appeal filed against the rejection. However, INPI believes that the end of the examination would be at the moment of rejection, as stated in INPI’s Normative Instruction No. 30/2013, Article 32.

Taking advantage of the raised discussion, moderator Mauricio Desiderio asked Judge Wanderley Sanan Dantas about the aforementioned article from IN No. 30/2013 and, specifically, whether the provision is in line with the Industrial Property Law (LPI), particularly Article 26 (which determines patent division) and Article 212 § 1st (which deals with full devolution of appeals). The Judge was asked about the position of the courts, especially the 2nd Regional Federal Court, regarding the interpretation of what would be the deadline for the end of examination.

Therefore, Judge Wanderley Sanan Dantas first focused on the position of the courts on the subject. The judge presented some of the decisions issued in different processes at TRF 2. In the most recent judgments on the subject, given by the 2nd Panel of TRF2, of which he is a part, it was understood that IN No. 30/2013 of INPI had exceeded its regulatory function, as the INPI’s understanding of when the end of the examination occurs was inconsistent with the full devolution effect of appeals.

According to the understanding of the 2nd Panel, the devolution effect guarantees an absence of limitation regarding the reassessment of the instituted procedure. The judge also emphasized that “there is no law that restricts such deposit only to the 1st administrative instance, nor is there any legal provision that refers to the impossibility of doing so in the 2nd instance.

Therefore, it cannot be affirmed that the examination of a patent application will end in the 1st administrative degree. […] We also verified that, in the case of endorsing art. 32 of IN, it goes against the principle of publicity of administrative acts, considering that the events chosen as the final marker by the mentioned device occur before the publication of the 1st instance decision on patent applications in the RPI.” For Judge Wanderley Sanan Dantas, the issue of not observing the principle of publicity is one of the most sensitive points of art. 32 of IN No. 30/2013 of INPI. Regarding another judgment of the 1st Panel of TRF2 on the subject, the Judge noted that it has 3 votes that differ from each other and that he awaits an extended trial, according to art. 942 of the CPC.

Judge Wanderley Sanan Dantas concluded by stating that he believes that the writ of mandamus is the appropriate instrument to use for the judicial questioning of the INPI’s act, rejecting a patent application division request on the grounds that it would be untimely because it was filed after the rejection in the first instance of the original request, as this act would violate a clear and certain right. This was the judicial measure used to challenge the act judicially judged by TRF2 on the subject.

Given the presentation, Bernardo Marinho commented that he believes that the patent system in Brazil is not yet mature, and therefore, often, due to mistakes, patent applications may not be perfectly drafted, leading to their rejection. In light of this, Mauricio Desiderio took the opportunity to ask Janaína Tomazoni if there would be any difference in the use and acceptability of division requests in Brazil and abroad, especially if the Brazilian Agricultural Research Corporation (EMBRAPA) faces any difficulties in this regard and what they would be.

The speaker commented that, in her opinion, the division of applications in most other countries is easier than in Brazil. According to her, considering the peculiarities of the legislation in each territory, in most cases, the filing of a divided application is allowed in the appellate phase. Or, when division is only allowed in the 1st instance, to give the applicant a chance to continue with the attempt in a matter that was not accepted, the organization issues an early notification communicating the acceptability for the granting of a certain group of claims. She used the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) as examples.

In this context, Mauricio Desiderio concluded his moderation by asking Bernardo if there would be any impact of division requests in the appellate phase on INPI’s backlog. To answer, the lawyer brought a statistical survey from 2008 to 2023 with all decisions of the 2nd instance of INPI, totaling 8,490 decisions. Of these, he highlighted that only 186 had requests divided in the appellate phase (about 5%).

Also, in the temporal sphere, he brought the average number of months between the initial rejection and the appeal decision without a division request (39 months) and with a division request in the appellate phase (42 months), considering the little significant difference. Bernardo summarized his position by saying that division requests do not have a significant impact, not justifying the limitation of the rights of depositors.

To watch the event, click on this link.