Prosecution of Preliminary Office Actions
On April 12, 2022, the Brazilian PTO’s Ordinance No. 34 regulating the publication of preliminary office actions for patent applications filed as of 2017 and pending examination entered into force. It should be noted that the previous preliminary office action only encompassed applications filed until the end of 2017. Now, it covers all applications filed from 2017 onwards, as long as they have searches available for corresponding applications in other countries.
The formal requirements and procedures established by Ordinance No. 34 are similar to those applied to patent applications filed in or before 2017, with special attention to the following points:
- In response to the preliminary official action, arguments must be presented in relation to the documents cited in the search report, in addition to amendments in the set of claims. It is also recommended to present new copies of the specification, abstract and drawings adapted to the Brazilian practice. Failure to provide a response to the preliminary official action within 90 days will result in the application being definitively shelved; and
- When impeditive prior art documents are cited, if the amendments to the claims and the technical arguments intended to overcome the cited prior art documents are not presented in response to the preliminary office action, the application will be rejected with the right to appeal.
