Examination requests: a chaotic scene
Since 2008, based on report no. 0152/2008 issued by the attorney general of the Brazilian patent office (INPI), Article 32 of the Brazilian patent law has been interpreted as a limitation on the amendments applicants can introduce.
The general agreement among local patent associations is that this results in several flaws when patent applications are made in Brazil. Instead of amending the previous application, as a scientist would do, the INPI, in a way that’s very common in Brazil, decided to find a magical solution. The result was guideline no. 93/2013, published last year, which actually introduces more uncertainties to an already uncertain scenario.
The mantra adopted by the INPI since 2008 is that, after examination of a patent application is requested, only amendments that result in a restriction of the scope of protection, or those that aim to correct clear mistakes, will be accepted. Any attempt to modify the scope of protection or make it broader will be rejected.
At the time, the first reaction of applicants was to file divisional applications to circumvent this limitation. This was a logical reaction as the only restriction on divisionals, according to Brazilian law, is that they must be limited to the matter originally disclosed. However, the INPI immediately found a way of interpreting originally disclosed matter as originally claimed matter. As a consequence, those divisionals have fallen apart.
Another immediate reaction was to take advantage of a provision in Brazilian law that any interested party may request examination of a patent application. What if one of your competitors, seeing that the set of claims in one of your applications includes unpatentable matter, decides to request examination of the case? This leaves you with no way to file amendments and it seems that you will simply lose your case. So far, there has been no solution to either problem.
Guideline 93/2013 introduced some novelties to this chaotic scene. First, should the scope of protection be broadened in a single claim, the whole set of claims will be rejected, and the previous claims will be considered in examination. This does not seem to be a very effective way to proceed, particularly in view of the huge backlog currently faced by the INPI. Any attempt to make examination faster would be warmly welcomed.
"should the scope of protection be broadened in a single claim, the whole set of claims will be rejected, and the previous claims will be considered in examination."
Second, and this is somewhat surprising, is that changes in claim categories may be accepted. Even worse, exclusion of matter from independent claims can be allowed if the matter is included in any of the patentability restrictions of Brazilian law. You might be wondering what happened to the INPI’s mantra. After all, modifying claim categories will certainly change the scope of protection and, sometimes, make it larger. Removing elements from independent claims will always make the scope of protection larger.
Against this background, a new article is sorely needed to explain under which circumstances a modification of a claim category can be accepted. Additionally, it seems the INPI is disregarding the preambles of claims as if they were simply decoration. The rule, in general, is that a product defined by a process can be redrafted as a process defined by a process.
Similarly, a process defined by a product can be redrafted as a product defined by a product. The other way round would not be possible: that is, having the product defined by a product and the process defined by a process. This analysis may sound simple, but the examples provided at the end of guideline 93/2013 can be a real challenge. There are particular situations in which even the inclusion of new claims may sound acceptable.
The above is a brief description of the troubled times currently lived in by Brazilian practitioners. Unlike a mathematical formula that always works in a given way, it is impossible to forecast that the prosecution of a Brazilian patent application will reach a reasonable result. Concerning guideline 93/2013 in particular, there is no standard formula either. The best results will therefore be reached on a case-by-case basis.
André Bastos Venturini is head of patent prosecution at Licks Advogados. He can be contacted at: andre.venturini@lickslegal.com
