Newsletter Edition 19 - November 2020


Voluntary amendments to patent applications after exams will continue to be accepted by the BPTO

In order to comply with the sentence, the First Specialized Panel of the Federal Court of Appeals of the 2nd Region unanimously decided, in a session held on November 11th, not to hear the appeal filed by the Federal Public Ministry (MPF), in which it defended that even the voluntary changes to reduce the scope of protection in patent applications could only be filed until the request for examination by the Brazilian Patent and Trademark Office (BPTO), through a literal interpretation of Article 32 of the Industrial Property Law (Law 9.279/96), and that, therefore, Resolution 93/2013, edited by the BPTO to discipline the matter, would violate the material res judicata of the original lawsuit, in which the nullity of BPTO Opinion PROC/DICONS nº 07/2002 was determined, which admitted voluntary changes formulated after the exam of patent applications, either to increase or reduce the scope of the claims.

In the process ABPI acted as amici curiae. The magistrates considered that, in this case, the adequate appeal would be the interlocutory appeal because it is a decision to comply with the sentence, and, therefore, they did not hear the appeal filed by the MPF.

On January 15th, 2019, the 25th Federal Court had already rejected the application submitted by the MPF, questioning the terms of Resolution No. 93 of the BPTO of June 10th, 2013. According to Judge Eduardo André Brandão, Resolution 93 contributes to reducing the backlog and delay in the analysis of patent applications.

Considering the lack of knowledge of the appeal filed by the MPF, BPTO’s Resolution No. 93/2013 remains in force, so that voluntary amendments to patent applications made by holders after the examination request, if claiming to reduce the scope of protection demanded, will continue to be accepted by the BPTO.