Brazilian Patent and Trademark Office (BRPTO) News

New Guidelines for re-examination and post-appeal prosecution of patents

The BRPTO has just published examination Guidelines on the patent application prosecution procedure (re-examination) to be followed by examiners in cases where a patent application has been rejected, the rejection decision has been appealed, and the rejection is overturned returning the application to a new examination.

These guidelines are primarily aimed at examiners, but they include important aspects for applicants in this re-examination phase, which we summarize below:

The re-examination will be carried out by the same examiner, whenever possible, who may conduct a new background search.

The examiner must always give the applicant the opportunity to make changes to the application to comply with the requirements of patentability when deemed necessary.

At this stage of re-examination, “third-party observations” will not be admissible.

The appeal decisions are final and un-appelable, which means that what was decided in the appeal cannot be subject to new discussion in the stage of re-examination. However, applicants should be prepared to face possible new objections from the examiner and take into account that divisional applications may not be filed, unless there had been an objection for lack of unity.

If the application is ultimately denied again, the applicant may file a new appeal.