Establishment of procedures for examining patent certificates of addition

The Brazilian PTO (BPTO) had already established, through Ordinance/INPI/DIRPA No. 14, of August 29, 2024, general procedural rules regarding the form and content of certificates of addition (C.A.) for invention patents. However, through Ordinance/INPI/DIRPA/No. 24, of October 22nd, 2024, the procedures for examining such patent applications, foreseen in article 76 of the Brazilian Industrial Property Law (BIPL) to protect improvements or developments of an invention in Brazil, are now defined.

According to the new Ordinance, requests for certificates of addition will only have their technical examination started after the original application is granted, upon payment of the examination fee due, with the same Examiner being recommended to examine both applications. The applicant must be the same as in the original application, and the inventors and priorities may differ.

During the technical examination, it will be verified whether the subject matter claimed in the C.A. is: i) included in the same inventive concept as the original application, ii) not included in the same; and iii) within the same category of claims as those granted in the original application.

Although the analysis regarding the inventive step requirement does not occur, the requirements of industrial application and novelty will be examined so that, in the absence of the first, the assessment of the latter is not mandatory. For the purposes of analyzing the novelty requirement, the search of the state of the art will be supplemented based only on documents published in the period between the filing of the C.A. and the filing/priority of the original application.

Regarding the claims, they must contain the subject matter claimed in the original application (or patent) in the preamble and the improvement or development introduced only after the characterizing expression.

The assessment of the patentability requirements will not occur if the subject matter claimed in the C.A. falls entirely within articles 10 (not considered inventions) or 18 (non-patentable inventions) of the IPL. The assessment of clarity, precision, ground, sufficiency of disclosure and compliance with article 32 of the IPL will be carried out based on the provisions of INPI/DIRPA Ordinance No. 14/2024. The existence of documents presented in the form of third-party subsidies, search reports, examination, opposition or appeal procedures, will be indicated with the publication of official actions (under decision codes 6.1 or 7.1) in the Official Gazette (O.G.) after the first examination, with rejections only being admitted after the second examination of the C.A..

In the cases listed below, the C.A. application may be shelved: 

– maintenance of the shelving of the original application;

– maintenance of the rejection of the original application;

– maintenance of the rejection of the original application at the appeal stage;

– confirmation of withdrawal of the original application;

– definitive shelving of the original application;

– shelving of the original application without an appeal having been filed within 60 days;

– maintenance of the shelving of the original application at the appeal stage;

– change of nature of the original application from invention patent (IP) to utility model (UM);

– original patent that has been declared null;

– granting of the forfeiture request of the original patent without an appeal having been filed within 60 days;

– maintenance of the forfeiture of the original patent at the appeal stage; and

– extinction of the patent.

Nevertheless, according to article 48 of Ordinance/INPI/DIRPA No. 14, if the C.A. is shelved, the applicant may, within 60 days from the publication of such decision, request its restoration and change of nature into an invention patent or utility model upon payment of the fees due.

This Ordinance came into force on December 3, 2024, the date on which it was published in the O.G., revoking Norm No. 01/2013 of DIRPA.

For further information, please do not hesitate to contact our team at mail@kasznarleonardos.com.