BPTO proposes regulation of alternative claim sets

Brazil advances toward international harmonization in patent examination

BPTO PROPOSES REGULATION OF ALTERNATIVE CLAIM SETS

Summary

The Brazilian Patent and Trademark Office (BPTO) presented, during the “Ongoing Dialogue with Stakeholders” session, its proposal to formally regulate the acceptance and examination of alternative claim sets in patent applications. This initiative represents a strategic step toward modernizing Brazil’s patent system and aligning it with major international jurisdictions.

Background

Although the BPTO has informally accepted alternative sets of claims, the lack of specific regulation has led to inconsistent practices. In many cases, examiners have limited their analysis to the narrowest claim set, reducing the strategic usefulness of alternative claim sets and creating uncertainty for applicants.

The new proposal seeks to address these issues and establish clear and predictable procedures.

Key Points of the BPTO Proposal

1. Limit on permitted versions

Up to 3 claim sets:

• 1 main
• 2 alternative

2. Timing for submission

Alternative claim sets may be submitted only once and exclusively during first-instance substantive examination.

3. Mandatory order of preference

Applicants must indicate a priority order among the sets.
If the main claim set is found patentable, the alternative sets will not be examined.

4. Fees

Fees will be calculated based on the total number of claims, including the claims of the alternative sets.
No refund will be provided if the alternative sets are not examined.

5. Divisional applications

For divisional applications filed after the start of substantive examination, the use of alternative claim sets will not be permitted.

Potential Impacts

     Expected Benefits

• Greater legal certainty and consistency in examination.
• Alignment with international standards, facilitating global strategies.
• Increased flexibility for drafting complex applications.
• Potential reduction in the overall time to grant.

     Points to Consider

• The new fee structure may increase costs for strategies that rely heavily on alternative claim sets.
• Restrictions on voluntary divisionals when defining the protection strategy.
• The BPTO may experience an increased workload, potentially affecting examination timelines.

Conclusion

The BPTO’s proposal represents an important step toward modernizing Brazil’s patent system. The adoption of clear rules for alternative claim sets will strengthen predictability and examination efficiency, aligning Brazil with international best practices. Nonetheless, applicants should carefully assess the impact of the new fees and the restrictions on divisionals when defining their protection strategies.