Possibility of introducing amendments in the set of claims after the request for examination of a pending patent application with the Brazilian Patent Office

A Federal Court in Rio de Janeiro recently found that Rule #093/2013 of the INPI (the Brazilian Patent Office), which established the guidelines on the applicability of Article 32 of Act #9,279/96 (the Brazilian Intellectual Property Act) in relation to patent applications was not in conflict with a public civil action filed by the Federal Public Prosecution Office.

This is because, the aforesaid public civil action, filed in 2003, by the Federal Public Prosecutors Office (MPF), against the INPI, was aimed to refrain the examiners from applying the guidance given in the PROC/DICONS Opinion #07/2002, concerning the interpretation of Article 32 of Act #9,279/96, as well as to voluntarily abstain from admitting changes in the patent applications, made after the examination request, in accordance with Article 32 of the Brazilian Intellectual Property Act.

A public civil action is, in fact, a “public-interest civil action”, similar to a “class action” brought by Brazilian Government Attorneys of Governmental Agencies, or by Brazilian Associations that have as their main goal the protection of public interest matters.  As a Patent gives an exclusive right to patent holder for certain period of time to use it invention by himself or herself, or to give license to another party to use it, the public interest consideration is often brought to discussion by the ones entitled to represent the society at the Courts, role in this situation assumed by the Federal Public Prosecutors Office (MPF).

According to the provisions of Article 32 of the Brazilian Intellectual Property Act, an amendment to a patent application’s set of claims (which limits an invention’s scope) will not be accepted unless it is made before examination is requested, and provided that the requested amendment is limited to the matter originally disclosed, and aims to satisfy the need for further clarification or definition of such matter.

The Federal Public Prosecutors Office, however, filed an application for compliance with the court decision alleging that, after six (6) years of res judicata of said public civil action, the BPTO would have violated the wording of Article 32 of the Brazilian Intellectual Property Act, by enacting another Rule #093/2013, which admitted spontaneous changes in the patent application after the examination request, provided such changes restrict the scope of the invention and do not extend it.

According to the Federal Public Prosecutors Office, the wording of the above-mentioned Rule #093/2013, not only violates Article 32 of the Brazilian Intellectual Property Act, but also the authority of the res judicata in the present public civil action. The Office’s argument is that Article 32 of the Brazilian Intellectual Property Act prohibits any voluntary alteration after the request for examination, either to increase or to reduce the protection initially claimed.

In spite of the Federal Public Prosecutors Office arguments, Hon. Eduardo Andre Brandão de Brito Fernandes , in charge of the 25th Federal Court or Rio de Janeiro, upon trial of the enforcement action requested by the Federal Public Prosecutors Office against the INPI (docket #0513584-06.2003.4.02.5101 (2003.51.01.513584-5) on 15 January 2019, considered that with the issuance of Rule #093/2013, the BPTO allowed voluntary changes in the set of claims, after the examination request, provided that the amendments aimed reduce the scope of protection initially claimed.

According to the decision of Hon. Eduardo Brandão, INPI Rule #093/2013 does not violate res judicata, as the wording of art. 32 of the Brazilian Intellectual Property Act is not absolute, and leaves room for improvement of the patent application after it is filed.

The decision considered the BPTO’s view is more current, as it is the authentic Intellectual Property regulatory Agency with the designated jurisdiction to rule, supervise and foster the subject matter based on the Federal Constitution. Thus, the Hon. Judge Brandão determined that amendments in patent applications seeking to reduce the subject matter of patents should be permitted.

In addition, two other relevant factors influenced the decision in question:

(i) the BPTO’s well-known delay in examining patent applications, which may reach 10 (ten) years or more. One of the objectives of Rule #093 is to face such backlog, since research and development technology will rarely wait for the INPI’s analysis to grant a patent.

(ii) society’s access to knowledge and encouragement for free competition. This is because with the reduction of the invention’s scope, after the examination request, matters that were previously excluded can be freely exploited and developed by third parties.

Therefore, the Federal Court very properly ruled the enforcement of Article 32 of the Brazilian Intellectual Property Act, confirming the possibility of amendments to the set of claims after the examination request of a pending patent application in the BPTO, provided there is no addition of new matter.

The Federal Public Prosecutors Office filed an Appeal against the 25th Federal Court decision on March 21, 2019, and the subject matter will be brought to the analysis of the Federal Court for the 2nd Circuit, in Rio de Janeiro, within the next months.