Important update: New Rules Published by the Brazilian National Institute of Industrial Property

The Brazilian PTO (INPI) published, in the IP Gazette # 2800 of September 3, 2024, two new Ordinances that bring changes in the procedures for processing patent applications at the Institute.

INPI/DIRPA Ordinance No. 14, of August 29, 2024, establishes general rules to explain and comply with provisions of the Industrial Property Law, detailing the specifications regarding the form and content of patent applications and certificates of addition, replacing former INPI/PR Normative Instructions No. 30/2013 and No. 31/2013. INPI/DIRPA Ordinance No. 16, of September 2, 2024, republishes and updates the Guidelines for Examination of Patent Applications Block I.

Among the main introduced changes are the possibility of dividing a patent application until the date that examination ends for the original application in the first instance, now defined as the date of publication of the decision to grant, reject or definitively shelve the application. In addition, this period no longer applies to ex officio divisions of a patent application, opening the possibility for filing divisional applications during the appeal phase, when requested by the INPI itself.

Furthermore, the filing of divisional applications must now contain a marked-up copy indicating, specifically, the differences of the set of claims of the divisional application in relation to the last set of claims presented in the original application, with clear markings of the changes made. It has also been established that, whenever there is an overlap of the scope claimed in the original and divisional applications, the claims of the original application should be amended to exclude the subject matter claimed in the divisional application.

In addition to the changes mentioned above, with respect to divisional applications, these new guidelines also address, more generally, amendments to patent applications. According to these documents, any modification submitted after an application has been considered as filed must include a marked-up copy that clearly indicates the location of the changes in the text, using strikethrough for removals and underlining for additions or replacements. Alternatively, this copy can be replaced by a detailed clarification that specifically points out what changes have been made, indicating the page, the excerpt and the type of modifications performed.

It is worth mentioning that these Ordinances will enter into force 30 days after the date of their publication in the IP Gazette, that is, on October 3, 2024, allowing for an adaptation period to all those involved.

For more details on how these changes may impact your current or future patent applications, please do not hesitate to contact our team at mail@kasznarleonardos.com.