The Brazilian Patent Office (hereinafter only BPO) issued on 25th April 2008 a New Procedure specifically related to the application of Article 32 of the Brazilian Industrial Property Law (Brazilian IP Law).
This New Procedure aims to set an uniform ruling to the previous and different understandings which came into effect with the creation of the Opinion/PROC/DICONS/No.07/2002. This Opinion allowed to change the claims of a patent application even after the date of the patent examination request. In 2008, this Opinion was revoked by MEMO/INPI/DIRPA/No. 072/08, which established some limitations to the changes of the patent application.
With the New Procedure, the insertion of any change to the specification, claims, abstract and design (if any) may take place up to the filling of the patent examination request. This time frame limitation does not apply to correction of material errors. Thus, one may request the correction of such errors in all patent applications, at any stage, provided that the correction conforms to the subject matter previously disclosed.
Further to that, voluntary modifications or those derived from technical office actions may be accepted insofar as they restrict the patent claims.
This New Procedure has been criticized by academics and scholars, as Article 32 of the Brazilian IP Law has not provided an express rule restricting the alteration of the claims after the examination request. Moreover, the prior IP Law (Law 5,771/72) prohibited any alteration of the claims after the filing patent date. Therefore, the limitation of the New Procedure recalls the existed restriction on the prior law and it is regarded as a set back from the implementation of Article 32 of the Brazilian IP Law.
It has also been argued that the New Procedure does not match properly with those rules contained in the developed countries, such as that of Article 123 of the European Patent Convention.
It is worth mentioning that, although Article 32 of the Brazilian IP Law and the New Procedure permit the modification of the claims, the inclusion of any exceeded claims from those initially requested in the patent filing may be a justifying reason for patent nullity, as provided by in Item III of Article 50 of the Brazilian IP law. This means that changes to the patent application cannot exceed the subject matter disclosed in the original application.
It should be also highlighted that the New Procedure has only been used by the BPO’s examiners on new patent applications, as from 25th April 2008 and those pending for patent examination. Thus, technical opinions already issued regarding the patent examination are not affected in any way.
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