New Ordinances on procedures and guidelines for the examination of patent applications in Brazil

The new INPI Ordinances update the legislation for patent applications, including divisional applications

The Brazilian Patent Office (INPI) has recently published two new Ordinances with changes in the procedures for processing patent applications.

INPI/DIRPA Ordinance No. 14, of August 29, 2024, establishes general rules to comply with the provisions of the Industrial Property Law and regulate the formalities and content regarding the filing of patent applications and certificates of addition.

INPI/DIRPA Ordinance No. 16, of September 2, 2024, constitutes the update of Block I of the Guidelines for the Examination of Patent Applications.

Among the main changes introduced are the new rules for divisional applications.

In particular, as of October 3, 2024, the date of entry into force of the new Ordinances, a divisional application of an original application may be submitted, until the date of publication of the decision to grant, reject or definitively archive the original application, thus considering the date of publication as the date on which the examination of the original application in the first instance ends.

In addition, divisional applications must now be filed including a marked copy showing amendments from the claims of the original application that are pending at the time of filing.

It is also established that, whenever there is an overlap between the subject matter claimed in the original and divisional applications, the claims of the original application must be modified to exclude the subject matter claimed in the divisional application.

Likewise, the new rules on modifications to patent applications establish that any modification of an application after it is considered filed must include a marked copy that clearly indicates the amendments in the text. Alternatively, this copy may be replaced by a detailed clarification specifying what changes have been made, indicating the support in the specification for the modifications made.

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