On December 12, 2023, the Brazilian Patent and Trademark Office (BPTO) published Opinion No. 1 19/2023, significantly impacting patent applications.

Opinion No. 19/2023 establishes that patent applicants are prohibited from introducing amendments during an administrative appeal against the rejection of a patent application. This prohibition encompasses presenting new data to support technical effects, modifying the specification, and also amending the claims — even amendments intended to limit the scope of protection of the patent application and/or enhancing clarity in the claimed subject matter.

The restrictions sought by the BPTO for administrative appeals is in opposite direction of the global trend observed in other patent offices and contravene Federal Law and Case Law. These regulations guarantee applicants a comprehensive review of their appeals, inclusive the ability to modify the claim set during the appeal stage.

Lastly, it is important to note that these modifications will become effective as of February 12, 2024, and all pending appeals will be subject to these restrictions. Applications under appeal will have a 60-day term for adjustments, beginning on December 12, 2023.

We are actively having meetings to negotiate this matter with the BPTO and will promptly provide updates as new information becomes available.

For further details, contact us.