The Brazilian PTO publishes a report on its Public Consultation on changes to the procedure for examining patent applications

The Brazilian PTO publishes a report on its Public Consultation on changes to the procedure for examining patent applications

Last Friday (24), the Brazilian Patent and Trademark Office (BPTO) published the report on its Public Consultation on the possible revision of articles 32 and 33 of Law 9279/1996, the Industrial Property Law. Both provisions define, respectively, the criteria for voluntary amendments to the patent application and the deadline for requesting examination of the application, which are fundamental to the process of examining and granting patents, and whose modification could have a considerable impact on the Brazilian patent system.

The Public Consultation aimed to collect the opinions of stakeholders in the field, such as companies, trade associations, educational and research institutions, public bodies, and civil society. In this way, it consolidated responses from 37 institutions, 13 of which were companies and 3 teaching/research institutions. Dannemann Siemsen, as one of the TPS respondents, made a significant contribution to the results presented.

Among the results, regarding amendments, the overwhelming majority of participants (84%) pointed out that the possibility of making amendments to a patent application is fundamental in order to, for example, give more clarity to the invention being protected and adapt the patent application to Brazilian legislation and practice.

Most participants were against reducing the deadline for making voluntary amendments to patent applications. In the opinion of this majority group, the reduction was seen as potentially harmful, as it could lead to premature and poorly formulated patent applications, as well as harming only national applicants.

Likewise, a majority of respondents (49%) felt that the ideal period for requesting examination was the current 36 months from the date of filing the patent application. And for most respondents, abolishing the time limit for requesting examination was seen as potentially harmful, in that it would overburden the INPI, make technical examination more difficult with long claim charts and reduce the agency’s collection of official fees.

Concerning to whether it is appropriate for an interested third party to be able to request examination of a patent application, the majority of respondents (51%) felt that this proposal was unreasonable. For this parcel of respondents, only the owner or their legal representative should have the legitimacy to request examination of the patent application. Furthermore, these participants consider that the figure of the interested third party could create damaging situations for the patent holder, not speeding up the examination and causing a situation of legal uncertainty for the applicant.

The INPI report can be accessed via the link: Relatório de tomada pública de subsídios para alteração dos arts. 32 e 33 da LPI

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