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Understanding the BPTOs rules for claim amendments after requesting examination

por Bernardo Marinho e Adélia Valladares

14 de agosto de 2020

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The request for examination of a patent application is not a formal step in Brazil, but an important one that can determine the odds of a patent being granted and the scope of protection of a patent.

This is because the Brazilian Patent and Trademark Office (BPTO), through its Resolution No. 093/2013, created a unique rule prohibiting the applicant to claim, after the request for examination, a subject matter not originally claimed, even though it was present in the specification and drawings as originally filed. Ergo, applicants must be very attentive when requesting the examination of Brazilian patent applications. Otherwise, they might face the rejection of future amendments and lose the opportunity of obtaining patent protection for an embodiment disclosed in the specification.

A good advice is to submit a claim set with one broad independent claim for each embodiment disclosed in the specification before requesting the examination and, thereafter, to file a claim set with a narrow and reasonable scope of protection. The idea is to create the possibility of claiming different embodiments during the examination.

It is also important to be aware to not request examination based on a claim set defining only statutory non-patentable matter in Brazil, such as method of treatment, and plant or animal cells. This is because the BPTO’s Resolution No. 093/2013 states, for instance, that redrafting a therapeutic method claim as a Swiss-type use claim – which is the acceptable format in Brazil – would not be acceptable once the examination is requested.

Is the BPTO’s Resolution No. 093/2013 legal?

The sole article of the Brazilian IP Law related to amendments is article 32, which reads as follows:

Article 32 – In order to better clarify or define a patent application, the applicant may perform amendments until the request for examination, provided that they are limited to the subject matter originally disclosed in the application.

By interpreting this article in its literal and ordinary sense, one concludes that it only defines rules for voluntary amendments performed up to the examination of a patent application is requested. So, article 32 should not be used for amendments performed during the examination, especially the ones submitted in reply to the BPTO’s office actions.

Despite the lack of explicit rule, it is reasonable to say that the Brazilian IP Law allows an Applicant to perform claim amendments after the request for examination as long as no new subject matter is added inasmuch as:

-said Law should be interpreted in a way that allows the grant of patents – which is a constitutional right in Brazil –, and not to create procedural barriers for issuing patents;
-article 220 of the Brazilian IP states that “the BPTO shall make use of the acts of the parties whenever possible”; and
-as it is possible to amend the claims of a patent – article 47 foresees the possibility of partial nullity –, amending the claims during examination should also be possible.

Therefore, by creating a rule prohibiting amending the claims to seek patent protection for a subject matter disclosed in the patent application, but not claimed when the examination was requested, the BPTO’s Resolution No. 093/2013 is against the Brazilian IP Law.

This is important because the BPTO is entitled to issue internal rules with the sole purpose of clarifying a rule already established in the Brazilian IP Law, meaning that the BPTO cannot create rules not defined in the Brazilian IP Law.

The BPTO’s Resolution No. 093/2013 is also undue because the Brazilian Constitution expressly establishes that no one shall be forced to do or refrain from doing something except by virtue of law.

To sum up, there are good arguments to challenge a rejection from the BPTO based on an alleged violation of article 32 of the Brazilian IP Law according to the BPTO’s Resolution No. 093/2013 before the Federal Court.

In Brazil, the BPTO does not have the final say about the patent system in Brazil because the Federal Court is fully competent to overrule the BPTO’s decisions in their entirety.

Favorable decision for Applicants against the BPTO’s new interpretation

In March of 2002, ratifying a procedure that has been used since 1997 – the year that the current Brazilian IP Law came into effect –, the BPTO issued a legal opinion stating that article 32 of the Brazilian IP Law does not hinder the amendment of a patent application after the request for examination as long as no matter extending beyond the content of the application as originally filed is added.

Years later, the BPTO completely changed its interpretation. In May of 2008, the BPTO issued a new legal opinion indicating that the only acceptable amendments during examination would be the ones that do not change the subject matter claimed when the examination was requested. Thereafter, this opinion was replaced by Resolution No. 093/2013.

Based on the doctrine of legitimate expectation and the principles of legal certainty and good faith, the BPTO should at least have created a transitional system allowing the Applicants to adjust their applications in view of new interpretation/rules.

Unfortunately, this did not happen.. The BPTO simply started applying its new interpretation to all pending patent applications.
As a result, several Applicants were harmed by the BPTO’s inconsistency. After all, no one expects that the rules of game will be changed after the game has begun.

One of these Applicants has challenged the BPTO’s rejection before the Federal Court of Rio de Janeiro (lawsuit No. 5002455-14.2019.4.02.5101). The BPTO had rejected the application under the allegation that it would not be possible to redraft a therapeutic method claim as a Swiss-type use claim after the request for examination, even though when the examination of the application was requested, the BPTO used to accept such amendment.

In 2019, a judge from the 25th Federal Court of Rio de Janeiro issued a decision (i) confirming that the BPTO’s current interpretation of article 32 of the Brazilian IP Law could not be applied to the patent application as it came up after the request for examination; and (ii) compelling the BPTO to accept the amendments and to resume the examination.

The BPTO filed an appeal against the decision, which is currently awaiting to be decided by the Court of Appeals of Rio de Janeiro.
Hopefully the Appeal Court will uphold said judge’s rationale and the decision on the merits so that the Applicants will be more encouraged to seek a legal remedy to compensate for the harms of the BPTO’s wrongfully inconstancy. Let’s wait and see.

It is important to bear in mind that the Appeal Court’s ruling is not applicable to other patent applications as Brazil is a civil law country. Nevertheless, this ruling will certainly have weigh on other challenges against the BPTO’s rejections.

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Bernardo Marinho

Conselheiro

Graduado pela UFRJ em Engenharia de Alimentos e Direito

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Adélia Valladares

Estagiária

Estagiária

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