Ivan Ahlert analyzes the BPTO’s restrictive interpretation of voluntary amendments to patent applications and its effects on BPTO Opinion 19/2023

Ivan Ahlert analyzes the BPTO’s restrictive interpretation of voluntary amendments to patent applications and its effects on BPTO Opinion 19/2023

Recently, Dannemann Siemsen senior partner and board member of the Dannemann Siemsen Institute, Ivan Ahlert, published an article entitled “Nossa LPI vs. a LPI do INPI (de hoje): mais sobre o art. 32 da Lei de Propriedade Industrial” (in English: “Our BIPL vs. the BPTO’s BIPL (of today): more on art. 32 of the Industrial Property Law”. In this text, the author deals with issues related to the Brazilian Patent and Trademark office (BPTO)’s Opinion n^o 00019/2023/CGPI/PFE-INPI/PG/AGU (19/2023), which imposed restrictions on amendments to patent applications, based on an evolutionary analysis of the BPTO’s restrictive interpretation of art. 32 of Law 9.279/96, Brazilian Industrial Property Law (BIPL). The author starts from a historical context to form a current and critical overview of the subject.

Firstly, Ahlert looks at the consequences of the publication by the BPTO’s Opinion 19/2023, a document which imposed restrictions on amendments to patent applications in the appeal phase and which generated doubts and legal uncertainty among users of the Brazilian patent system. The opinion states that it is no longer possible to (voluntarily or otherwise) amend a patent application in the appeal stage, which would call into question the effectiveness of art. 212, § 1^o of the BIPL, which determines that appeals will be given suspensive and devolutive effects. The author considers that the adoption of the measures stipulated in the opinion partly reflects the BPTO’s restrictive interpretation of art. 32 of the BIPL, which stipulates that “in order to better clarify or define the patent application, the applicant may make changes up to the request for examination, provided that these are limited to the matter initially disclosed in the application.”

Thus, in order to understand the BPTO’s conduct in publishing the aforementioned opinion, Ahlert looks back at the BPTO’s interpretations of art. 32 of the BIPL. Here, the author contextualizes his discussion and outlines the historical background to the drafting of the BIPL. At this point, the article points out that, as a result of negotiations between the Brazilian Intellectual Property Association and the BPTO, art. 32 as it currently stands aims to guarantee that amendments submitted before the request for examination of the patent application are obligatorily considered by the examiner, as long as they are limited to the matter initially disclosed in the patent application, stating that two aspects characterize only the voluntary amendments of art. 32: (i) they do not derive from a provocation by the BPTO, such as a requirement or opinion, which is why they are considered “voluntary” and, above all, (ii) because they derive from an express right, amendments submitted within the time limit of art. 32 will be incorporated into the application and will necessarily be considered during the examination, unless they are overtaken by new amendments within the same time limit.

According to Ahlert, art. 32 ceases to apply once the examination has been requested. Therefore, he explains, in the case of other types of amendments, whether or not they are taken into account during the examination is the prerogative of the examiner. This does not mean that amendments may not be submitted after the start of the examination. Amendments may be submitted after the start of the examination, the difference being that their acceptability is at the discretion of the examiner. For example, requirements under art. 35 of the BIPL, which expressly provide for the amendment of the application, can be met by filing amendments to the application which, provided they are limited to the matter initially disclosed in the application, can be accepted at the discretion of the examiner, including for procedural economy (art. 220 BIPL). For Ahlert, preventing amendments after the request for examination ignores the complexity of the examination of patent applications, which often require adjustments in response to new legal understandings or requirements. In his view, this is also problematic for international applicants, which may face requirements and objections not previously raised when entering the national phase.

The author mentions that, historically, the BPTO’s interpretation of article 32 has changed in a restrictive way and to the detriment of the system’s users, and that the interpretation given to article 32 of the BIPL in Opinion 19/2023 is part of a line of restrictive interpretations of this article that began with BPTO’s Opinion 12/2008, which determined that after the request for examination, only amendments that “intend to restrict the protection previously claimed” would be admitted. According to him, “it was never the intention of the proponents of the articles on amendments and examination that there should be, during examination, in any instance, limits other than the content of the application as filed.” Thus, this continuation of restrictive interpretations suggests a worrying trend away from the objective of facilitating the examination process and protecting the rights of applicants.

For the author, the changes in interpretation by the BPTO seem to distort the objectives of the amendments as set out in the BIPL, making it difficult for intellectual property professionals to understand what is allowed during examination and, especially, on appeal.

In his conclusion, Ivan Ahlert expresses concern about the negative impact these restrictions could have on the patenting process in Brazil. He suggests that instead of speeding up examinations, BPTO’s Opinion 19/2023 may result in delays and inefficiencies. This criticism is reinforced by his belief that the BPTO should be a reliable guardian of the rules and that changes aimed at solving operational problems should not occur to the detriment of established practices that promote innovation.

The full article can be accessed (in Portuguese only) via the link: https://www.linkedin.com/pulse/nossa-lpi-vs-do-inpi-de-hoje-mais-sobre-o-art-32-da-lei-4pzsf/?trackingId=679E3zcDjzyOggulTKB73Q%3D%3D

Note: For quick release, this English version is provided by automated translation without human review