The Brazilian Patent and Trademark Office published on September 3, 2024, two new Ordinances that introduce significant changes to the procedures for processing patent applications, as follows:
- Ordinance INPI/DIRPA No. 14, dated August 29, 2024 – Establishes general rules detailing the specifications regarding the form and content of patent applications and certificates of addition. This Ordinance replaces the previous INPI/PR Normative Instructions No. 30/2013 and No. 31/2013.
- Ordinance INPI/DIRPA No. 16, dated September 2, 2024 – Republishes and updates the Guidelines for Examining Patent Applications.
Key Changes:
- Divisional Patent Application: now it is possible to divide a patent application up to the final examination date of the original application at first instance. The new definition of “final date” refers to the date of publication of the decision granting, denying, or definitively shelving the application. Additionally, this rule no longer applies to ex officio divisional patent applications, allowing the filing of divisional applications during the appeal phase, when requested by the Brazilian PTO.
- Filing of a Divisional Application: the divisional application must include a comparison copy that clearly indicates the differences between the claims of the divided application and the most recent claims of the original application. The changes must be clearly marked.
- Claim Amendments: when there is an overlap between the scope of the original application and the divisional application, the claims of the original application must be adjusted to exclude the matter claimed in the divided application.
- Amendments to Applications: modifications made after the filing of the application must include a comparison copy, clearly indicating the changes in the text (strikethrough for removals and underlining for additions or substitutions). Alternatively, a detailed explanation shall be provided, specifying the changes, including page, section, and type of modification.
Implementation Deadline:
The new Ordinances will come into force and effect 30 days after their publication, i.e., from October 3, 2024.
We recommend reviewing and adjusting your internal processes to ensure compliance with the new requirements. Our patent team remains at your entire disposal to clarify any questions and assist you with the implementation of these changes, if necessary.
