Patent prosecution made simpler, faster, and more efficient

By adapting applications, using fast-track routes and managing claims, applicants can strengthen protection for inventions in Brazil, say Otto Licks, Pablo Barbosa and Rafael Tögel of Licks Attorneys.

As Brazil continues its trajectory as a global economy, securing robust and enforceable patent protection is paramount. With a modernising patent office, political commitment, and experienced partners such as Licks Attorneys, Brazil offers a compelling venue for protecting inventions.

Lean prosecution strategies

Thanks to the efforts made by the Brazilian Patent and Trademark Office (BRPTO) in recent years to reduce the examination backlog, filing-to-grant times have gradually and perceptibly decreased.

Prosecution speed before the office is not solely a matter of the examination queue. Applicants can reduce friction by timing claim adaptations and examination requests, using foreign exams, seeking a fasttrack and deploying divisional or alternative claims.

Although foreign decisions do not bind the BRPTO, and no procedure substitutes the BRPTO’s assessment for patentability, strategic prosecution can ease the path to grant.

Licks Attorneys helps applicants select the most effective strategy based on the technology involved, the desired scope of protection, and business objectives.

This includes recommending pre-examination and postexamination amendments, adapting claims and specifications to Brazilian practice, and considering additional strategies within Brazilian practice where they are strategically advantageous.

Choose the right route

The BRPTO currently offers two main mechanisms for accelerating patent prosecution in Brazil:

(i) Priority Examination: Available for specific categories of applicants, technologies, and circumstances, including green technologies related to alternative energy, transportation, energy conservation, waste management, and agriculture (environmentally friendly technologies), startups, public-interest technologies, and infringement-related cases.

(ii) Patent Prosecution Highway (PPH): This enables applicants to leverage favourable patentability findings from partner patent offices and thereby expedite examination before the BRPTO.

The PPH is often the most efficient acceleration route because it allows the BRPTO to leverage patentability analyses previously conducted by participating foreign patent offices that have found at least one corresponding claim allowable, including the US Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), and the China National Intellectual Property Administration (CNIPA), among others. This approach substantially reduces the time required to reach a final decision.

Under BRPTO’s Ordinance No. 48/2024, the Brazilian claims must sufficiently correspond to those claims, examination must have been requested, and BRPTO examination must not have started.

A focused claim set, a clear correspondence table and the relevant examination results from the earlier examining office can significantly speed up examination. Those results inform but do not bind the BRPTO.

Where no positive foreign result exists, BRPTO Ordinance No. 79/2022 offers the routes of prioritised processing that may be requested when all or part of the claimed technology has been licensed, offered for sale, imported or exported in connection with the Brazilian market.

Evidence of alleged infringement is another ground for prioritising processing, normally requiring prior notification, such as a cease-and-desist letter, together with proof of receipt and supporting indicia. An accused third party may also seek prioritisation.

The average time for issuing decisions on patent applications under these programmes is nine months, offering a rapid path for strategic inventions.

Shift a preliminary office action

A preliminary office action relies on prior art identified by other patent offices and gives applicants 90 days to amend the application or submit counterarguments. The response should address every citation, map each independent claim, and explain the technical differences and effects, rather than merely report a foreign grant.

If a corresponding application has been allowed abroad, file the allowed claims and latest examination result, explain correspondence and adapt the wording to Brazilian practice. Aligning the Brazilian claims with claims already found allowable abroad can often provide the most direct path to allowance. If broader protection remains important, defend a compliant main claim set and submit one or two narrower alternative claims, preferably supported by the foreign result.

Adapt the application

When filing in Brazil, patent applications should be adapted to local requirements, including the BRPTO’s two-part claim format. Under Ordinance #16/2024, independent claims should identify the claim category, followed by known prior-art features (if applicable) and a ‘characterised by’ clause defining the novel and inventive features.

Although similar to a Jepson claim, all claim limitations contribute to the scope of protection. As a best practice, the preamble should be kept as short as possible.

Substantive adaptation should be completed before requesting examination, especially for non-statutory subject matter. Articles 10 and 18 of the Brazilian Patent Statute (Law #9,279/1996) exclude computer programs per se; commercial and business schemes; presentation of information; therapeutic, surgical and diagnostic methods; certain natural biological materials; and living beings, except transgenic microorganisms.

Computer-implemented or business-related inventions may be patentable when defined through technical means and effects and to solve a technical problem. Where supported, treatment methods can often be redrafted as Swiss-type manufacturing-use claims.

Biotechnology claims may focus on eligible processes or material distinguishable from their natural counterparts. Broad generic claims alone cannot cure excluded matter: the formulation must be supported by the specification filed.

Use the examination-request window

Applicants may request examination at any time within 36 months from the filing date. Absent an immediate commercial or enforcement need, using part of this period may help. A corresponding PCT or foreign application may yield a search report, written opinion or allowance, enabling a tested strategy before examination.

Delay is not always advisable: the patent term runs from filing, and the ordinary examination queue follows the examination request date. If enforcement is urgent, request examination early or seek fast-track processing. Monitor the family, select the foreign claims best serving commercial objectives and retain a safe margin before the deadline.

Be smart with the claim-scope

Voluntary amendments within the original disclosure, including amendments that broaden claim scope, are permitted until examination is requested. In practice, that date establishes the broadest claim scope that may subsequently be pursued.

Matter disclosed but not claimed by then generally cannot later be introduced unless it restricts an existing claim. During examination, amendments may clarify or narrow claims, but cannot broaden protection.

Applicants should file their broadest defensible claim set before the examination request, preserving supported categories and commercially relevant alternatives. A divisional cannot recover scope absent from the parent’s claims when examination was requested.

Division and alternative claim sets

Voluntary division is generally permitted until the end of first-instance examination, but filing earlier is often preferable. A divisional application must refer to the parent application, remain within its disclosure and respect the broadest claim scope fixed at the parent application’s examination request.

It should remove, rather than duplicate, parent subject matter. Division is useful after a lack-of-unity objection or when distinct embodiments or claim strategies warrant separate prosecution.

The BRPTO also accepts alternative claim sets in the same application, although no dedicated regulation currently governs them. Rank them as ‘main claims’, ‘first auxiliary claims’ and, if justified, ‘second auxiliary claims’.

Each should be complete, progressively narrower, and accompanied by a concise explanation of amendments and support. Used prudently, they may provide a fallback without another office action but cannot exceed the broadest scope established at the examination-request date.

The leanest path is sequentially straightforward: adapt the application to Brazilian rules; define the broadest defensible claim; time the examination request to use foreign results.

If needed, choose an acceleration route before examination begins; answer a preliminary office action as though allowance could follow; and reserve divisions or alternative claim sets for commercially meaningful fallbacks. The objective is an enforceable Brazilian patent, not speed alone.

Takeaways
•  PPH often most efficient route
•  Time examination requests carefully
•  Use BRPTO’s two-part claim format

Otto Licks is a partner at Licks Attorneys. He can be contacted at otto.licks@lickslegal.com

Pablo Barbosa is head of the Mechanics Patent Acquisition Practice at Licks Attorneys. He can be contacted at pablo.barbosa@lickslegal.com

Rafael Tögel is head of Brazilian Innovations and Patent Acquisition Practice at Licks Attorneys. He can be contacted at rafael.togel@lickslegal.com