Project to reform the Brazilian Industrial Property Law: will it be possible to amend a patent application after filing?

July 2021

On 2 July 2021, the Chamber of Deputies of the Brazilian National Congress approved Bill No. 10.920/18 in relation to articles 19, 32, 35 and 217 of the Industrial Property Law.

In relation to article 19, the amendment would consist in the addition of a provisional patent application, similar to what already existed in several foreign offices. With regard to Article 35, it would set forth that substantive examination can take advantage of foreign searches and examinations. As for the amendment of Article 217, this would make reference to the recent accession of Brazil to the Madrid Protocol, insofar as it facilitates the international registration of trademarks.

However, the suggested amendment that would be made to Article 32, seems to be not completely clear.  

This provision relates to the possibility to amend a patent application after filing it.

Until now, according to article 32 of the Brazilian IP Law it was possible to amend (or rather clarify or define) the patent application, as long as this was done prior to the examination request and, most importantly, as long as it was limited to the subject matter initially disclosed in the application.

Although the article made it clear that it was possible to make this amendment or change prior to the examination of the patent, it did not specify what was meant by “the subject matter initially disclosed in the application“, nor did it specify whether it was possible to amend it subsequently, specifically, prior to the end of the examination phase.

Now, with the amendment of Article 32, we understand that the question would not be sufficiently clarified either:

Article 32 of the Brazilian IP Law

BEFORE: “In order to clarify or better define the patent application, the applicant may make changes until examination is requested, provided that such changes are limited to the subject matter initially disclosed in the application”.

NOW: “In order to clarify or better define the patent application, the applicant may make changes until examination is requested, provided that these are limited to the subject matter initially disclosed in the application, considered all the documents provided for in Article 19″.

As can be seen, only a small clarification would be added at the end of the article in relation to the documents in article 19; however, all of them refer to the step prior to the request for examination. Thus, the question still remains as to whether it is possible to amend the application afterwards.

Fortunately, this recently approved bill still has to be examined by the country’s Senate, so there is still time to make some changes that would clarify whether it will be possible to amend a patent application after filing, before the examination has been completed.

Giselle Gomes, patent examiner at Brazil’s National Institute of Industrial Property (INPI) has proposed several options in her blog: https://www.gggomes.com/ to solve this pseudo-modification, which we will echo below.

What is written in italics and underlined, would be the suggestions for addition/modification:

“Proposal A – one end:

Art. 32. In order to clarify or better define the patent application, the applicant may make changes at any time before the end of the examination, voluntary or by technical requirement, provided that they are limited to the subject matter initially contained in the application.

Proposal B – the other end:

Art. 32. In order to clarify or better define the patent application, the applicant may only make changes until examination is requested, provided they are limited to the subject matter initially contained in the application.

Proposal C – weighted 1:

Art. 32. In order to clarify or better define the patent application, the applicant may make voluntary changes until examination is requested, and after the request for examination, per technical requirement, provided that these are limited to the subject matter initially contained in the application.

Proposal D – weighted 2:

Art. 32. In order to clarify or better define the patent application, the applicant may make changes until the request for examination, provided that these are limited to the subject matter initially contained in the application and after the request for examination, provided that they are limited to the subject matter claimed in the valid claim framework.

Proposal E – weighted 3:

Art. 32. In order to clarify or better delimit the patent application, the applicant may make changes until examination is requested, provided that these are limited to the subject matter initially contained in the application and after the request for examination, under technical requirements, always limited to the subject matter claimed in the valid set of claims.”

Undoubtedly all of these are very interesting options and, above all, clarify the existing conflict regarding the possibility to amend a patent application once it has already been filed, both before and even after the examination by the INPI has been completed. As of now, we will wait to see whether the reform of the aforementioned provision as proposed is finally successful, or whether any changes are made to its current wording.

Eduardo Zamora | Sara del Río

Image: Benjamin Elliot on Unsplash