BRPTO establishes new general rules on the form and content of patent applications and certificates of addition

The Brazilian PTO published on September 3, 2024, by means of Official Bulletin (RPI) No. 2800, new rules in order to regulate the submission and filing of patent applications and certificates of addition, in terms of formality and content.

The new Ordinance No.14, of August 29, 2024, which establishes general rules of procedure to specify and comply with provisions of Law No. 9.279 (Industrial Property Law – IPL), has been under public debate since April 2023, when the Public Consultation No. 01/2023 was published by the Brazilian PTO. Among the topics covered in the new Ordinance, are: the submission and filing of the patent application, the specifications in terms of the documents that compose the patent application, as well as the filing of divisional applications, amendments submissions, among others.

Furthermore, the patent applications examination guidelines – Content of the Patent Application (Block I) were also republished to harmonize their content with the changes to the new rules. The Ordinance which republishes the application examination guidelines is Ordinance No. 16, of September 2, 2024.

The new rules will replace Normative Instructions INPI/PR No. 30/2013 and INPI/PR No. 31/2013, and Resolution No. 124/2013, which will be revoked, and will enter into force 30 days after the date of publication of Industrial Property Magazine No. 2800, which will fall   on October 3, 2024.

The main changes, introduced by the new rules, relate to patent application division, which according to the provisions of Art. 50, Chapter IV of Ordinance No. 14, the patent application may only be divided until the final examination date of the original application (first application filed) in the first instance, which is the publication date of the grant, rejection, or definitively filed decision.

Also in the divisional applications scope, Art. 55 of the same Ordinance, establish that the divisional application will be considered as being in the same procedural phase as the original application, which was already established by the Normative Instructions No. 31/2013 in their Art. 28. However, the new Ordinance establishes that in addition to documents and petitions, opinions from the original application may be used.

As for the scope of the modifications to the application (Chapter V), the new legislation establishes that the submissions of modifications must be accompanied by a comparison copy, specifically indicating the changes made to the text.

For more information, do not hesitate to contact us at international@simoes-ip.com

The Ordinances No.14/2024 and No.16/2024 may be read in full, in Portuguese, here

Authors: Lucas Caputo and Tainara Barbosa