Recent decisions by the 25th Federal Court of the Judicial Section of Rio de Janeiro, Brazil, with the assistance of Di Blasi, Parente & Associados, were upheld in response to the requests of patent applicants to prevent the new guidelines of the Brazilian Patent and Trademark Office (BPTO), related to administrative appeals in patent prosecution cases, from being applied to appeals filed before the enforcement of such guidelines. The firm’s perspective is that more favorable security decisions will be achieved for the benefit of clients in the patent prosecution.
In December 2023, the BPTO surprised all patent applicants by announcing a revision of its guidelines related to administrative appeals against the rejection of patent applications, proposing severe limitations to the principle of full review, established in Articles 212, §1º, and 214 of the Brazilian Industrial Property Law – BIPL (Federal Law No. 9.279/96).
In short, the new rules proposed by the BPTO went against the position consolidated for decades by the Autarchy by prohibiting patent applicants, in their administrative appeals, from presenting a new set of claims supported by their descriptive report and new documents.
After consulting the applicants themselves, represented mainly by the Brazilian Association of Industrial Property Agents (ABAPI) and the Brazilian Intellectual Property Association (ABPI), the Autarchy, seeking to accommodate the civil society’s request, issued several versions of its new guidelines, mitigating its initial inflexibility regarding the limitation to the principle of full review.
However, despite the BPTO’s commendable effort to listen to system users and heed social demands, the Autarchy maintained the position of applying the new guidelines retroactively, that is, to the appeals filed before the enforcement of such guidelines.
Given this scenario, some patent applicants, all represented by Di Blasi, Parente & Associados, filed a writ of Mandamus against the BPTO, highlighting that the retroactivity of the new guidelines infringed the principle of legal certainty and legal security. Similarly, considering that these appeals were not reviewed by the BPTO according to the normative framework in effect at the time of their filing due to the BPTO’s own delay in analyzing and deciding such appeals, the patent applicants, in their writ, also requested that their appeals be reviewed within a reasonable timeframe.
In ruling on the writs of Mandamus distributed to the 25th Federal Court, the distinguished Magistrate Eduardo Brandão granted the injunction recognizing the unconstitutionality of retroactivity and ordering the BPTO to review the appeals within 60 days.
Di Blasi, Parente & Associados believes that achieving these decisions is extremely relevant not only because they are the first ruling of the Judiciary and will thus guide new judicial decisions on the subject, but also because they recognize the importance of legal certainty for the country’s technological advancement and ensure that Brazil continues to have a legal and institutional environment conducive to innovation and development.
