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Update on BRPTO’s Patent Examination Guidelines: Key Changes and Impacts
The BRPTO published in the Official Bulletin (RPI) No. 2800 of September 3, 2024, the BRPTO/DIRPA Ordinance No. 16 of September 2, 2024, which republishes and updates the Patent Examination Guidelines – Block I. These guidelines will come into effect on October 3, 2024. The republication aims to align the content with the changes established by BRPTO/DIRPA Ordinance No. 14 of August 29, 2024, also published in the same RPI.
These updates reflect the BRPTO’s commitment to the continuous improvement of the industrial property system, seeking greater efficiency and alignment with international best practices in intellectual property, as well as promoting increased clarity and consistency in the enforcement of patentability requirements.
Below is a summary of the changes in the Patent Examination Guidelines – Block I:
- Specification
Previous Guideline (Res. 124/2013): Item 2.01 stipulated that the specification should “refer to a single invention or a group of interrelated inventions.”
New Guideline (Ordinance 16/2024): This clause has been removed from Item 2.01. However, the requirement for a group of interrelated inventions to constitute a single inventive concept remains in Item 3.98. The textual restructuring aims to provide greater precision and detail in describing inventions, addressing the patent application as a whole without specifying the presentation of the specification.
- Claim Formulation
Previous Guideline (Res. 124/2013): Item 3.20 indicated that the formulation of claims should “preferably start with the title of the application and must include the expression ‘characterized by.'”
New Guideline (Ordinance 16/2024): The wording of Item 3.20 has been adjusted to specify that: The formulation of claims must: (a) begin with its category and include the expression “characterized by.” The new wording aims for greater technical precision and avoids ambiguities in interpretation.
- Change in Technical Terms
Previous Guideline (Res. 124/2013): The terms “mathematical equations” and/or “mathematical formulas” were used in Items 2.36, 3.15, 3.81.
New Guideline (Ordinance 16/2024): These terms have been replaced with “mathematical expressions,” encompassing various forms of technical expressions beyond equations and formulas. This change reflects a broader adaptation to different technology fields, allowing for more precise and comprehensive descriptions.
- Drawings and Graphical Representations
Previous Guideline (Res. 124/2013): Items 4.05 and 4.06 addressed the acceptance of photographs to represent metallographic structures or three-dimensional images. It was emphasized that photographs would be accepted as long as they provided a better understanding of the invention.
New Guideline (Ordinance 16/2024): Items 4.05 and 4.06 now allow the submission of “graphical representations” such as figures, photographs, flowcharts, or graphs, provided they are clear. The new wording broadens the acceptance of graphical representations without requiring them to specifically contribute to a better understanding of the invention.
- Division of patent applications
Previous Guideline (Res. 124/2013): Item 3.133 regarding the division of patent applications stipulated that division could only occur until the end of the first-instance examination.
New Guideline (Ordinance 16/2024): The new wording of Item 3.133 permits voluntary division of applications until the end of the first-instance examination and extends the deadline for division requests initiated by the BRPTO (ex officio), even during the appeal phase.
As outlined above, some changes do not significantly impact the BRPTO’s previous understanding and reflect only a textual restructuring for greater clarity. The main change, which now allows the division of patent applications up to the appeal phase when requested ex officio by the BRPTO, aligns with recent judicial decisions and represents a significant adjustment in examination practices. However, transparency regarding the final deadlines for submitting divided applications may still raise questions. In such cases, applicants may need to seek judicial clarification to resolve any ambiguities about deadlines. Therefore, an applicant wishing to submit divided applications during the appeal phase will still need to seek judicial interpretation to reconcile the new rule with Article 224 of the IPL, which establishes a general 60-day period for actions when there is no explicit provision in the law.
Applicants should remain aware of the new guidelines and consider seeking judicial clarification to resolve any ambiguities about deadlines, thereby ensuring compliance with the new regulations. At Simões IP, we are committed to providing our clients and partners with the guidance and support needed to navigate these updates and ensure compliance with the new guidelines. Our commitment is to offer high-quality service and expert advice, helping to turn challenges into opportunities in the field of intellectual property. Contact us for personalized assistance to ensure that your patent applications align with the latest standards and practices.
Author: Ana Paula Rocha
