In Brazil, new appellate stage guidelines have been introduced to streamline the patent application process and reduce backlog. These guidelines emphasize the importance of thorough and strategic responses during the regular examination stage and appellate stage to ensure all objections are properly addressed. The motive behind these guidelines dates back to 2018 when the Brazilian Patent and Trademark Office (BPTO) started implementing rules to expedite the examination process and reduce pendency times.
Previously, applicants would often secure patents in other jurisdictions first before filing in Brazil to streamline the process. However, this method is no longer universally permitted under the new guidelines. Applicants must now adhere strictly to the rules to avoid unnecessary delays during the examination process.
During the appellate stage, which occurs after a rejection decision is issued, three new and experienced examiners review the examination. The new guidelines introduce the concept of administrative preclusion, requiring all objections to be thoroughly addressed in responses during the regular stage. Failure to do so may preclude applicants from addressing these objections later in the process.
Amendments during the regular stage are more flexible, allowing for broadening of scope and addition of new claims. However, during the appellate stage, only restrictive amendments are permitted, and these must directly address the objections raised during the regular stage.
There is also the possibility of reassessment back to the regular stage if examiners overlook specific arguments initially. Applicants can emphasize these points in subsequent responses to office actions, potentially allowing them to address unresolved issues anew.
Responding to office actions requires applicants to add dependent claims that can overcome objections related to patentability and to provide well-founded reasons for not complying with objections. During the appellate stage, applicants must present arguments defending the rejected claim set and provide specific requests to assist examiners in their review.
The new guidelines may have a retroactive effect on pending appeals, leading to legal challenges regarding the types of amendments permitted. Courts are evaluating whether stricter criteria introduced under the new guidelines should replace the previous, more flexible rules.
Statistical data indicates that approximately 7,100 appeals applications will be affected by the new guidelines, highlighting the importance of thorough and strategic responses during the regular stage. Overall, applicants must be prepared to adapt their strategies to the new appellate stage guidelines to navigate the patent application process more effectively and efficiently.