Can a patent be amended ex parte after grant, and if so, how?
No. Amendments are not allowed after a patent grant. However, a patentee may apply for a certificate of addition to protect an improvement or development introduced in the subject matter of the invention.
Can a patent be amended in inter partes revocation or invalidity proceedings?
Yes, although it is very unusual. There is only one known case in which a court determined amendments should be made in a patent claim. In such cases, the letters patent will be subsequently endorsed.
Are there any constraints on the amendments that may be made?
Yes. According to Article 32 of the Patent Law, applicants may amend their claims only until the request for examination, provided that the amendments are supported by the initial disclosure. The Brazilian Patent and Trademark Office (BPTO) recently issued new guidelines for amending patent applications. Voluntary amendments for correcting translation or typing errors can be made after the examination request if the specification fully supports them. Other examples of post-examination voluntary amendments that may be accepted by the BPTO are:
- inserting the context of a dependent claim into an independent one;
- restricting parameter range; or
- withdrawing an element originally presented as an alternative.
The new guidelines also indicate that elements originally included in an independent claim cannot be deleted, as this change could also imply that the scope of protection has been expanded.
The guidelines on voluntary amendments will become an important source and reference point for Brazilian examiners when performing the substantive examination of patent applications.
"Patents in Brazil: Part 3 – licensing" will appear in the IAM Weekly next week.
An earlier version of this article first appeared in the seventh edition of The International Comparative Legal Guide to Patents published by Global Legal Group Ltd, London (www.iclg.co.uk).