Recent decisions issued by the 12th and 9th Federal Courts of Rio de Janeiro have upheld the previous decision of the 25th Federal Court, granting the relief sought in the Writs of Mandamus filed against the Brazilian Patent and Trademark Office (BPTO). These rulings seek to prevent the retroactive application of the Federal Agency’s New Guidelines concerning administrative appeals in patent proceedings. The new guidelines entered into force on April 2^nd by BPTO’s Decree No. 10 of March 8^th.

In June 2024, the 25th Federal Court had already ruled on the non-retroactivity of these guidelines in two Writs of Mandamus filed under the representation of the law firm Di Blasi, Parente & Associados.

Recently, Judge Ana Amélia Silveira Moreira Antoun Netto, of the 9th Federal Court, also granted the requested relief in three cases, emphasizing that the application of the new guidelines to administrative appeals filed before their publication violates the principles of non-retroactivity of law, legal certainty, and the protection of legitimate expectations.

Additionally, Judge Laura Bastos Carvalho, of the 12th Federal Court, in three other cases, recognized that the filing of an administrative appeal prior to the new guidelines constitutes a vested right, and its admissibility “must be analyzed according to the interpretation in effect at the time the appeal was filed, with retroactive application of the New Guidelines being prohibited”.

In summary, the recent decisions of the 12th and 9th Federal Courts of Rio de Janeiro, also issued in writs of mandamus filed under the representation of the law firm Di Blasi, Parente & Associados, reinforce the importance of the principle of non-retroactivity of laws in the context of patent administrative proceedings. By confirming the understanding already established by the 25th Federal Court, these decisions not only ensure legal certainty but also protect the rights of those who relied on the rules in place at the time of filing their appeals. The recognition that the retroactive application of the new guidelines violates fundamental principles of Brazilian law is a significant step forward in the defense of legitimate expectations and the promotion of a stable environment for innovation in the country.