The New Landscape for Appeals in Rejected Patent Applications at the BPTO

Posted on: 3/2/2024

BPTO

Recently, the BPTO published, through its presidency, three Decision conferring normative force to opinions of its Specialized Federal Prosecutor's Office, drawn up in response to consultations formulated by the General Coordination of Appeals and Administrative Nullity Proceedings – CGREC, changing criteria for acceptance of amendments, documents and arguments in the context of appeals challenging rejections of a patent applications.

The first, published in Official Bulletin No. 2762, of December 12, 2023 – probably the most important – triggered a strong impact, in addition to many doubts, on the scope and effects of administrative appeals. This is because it consolidated some understandings of the Attorney General's Office on certain topics.

From this first order, OPINION No. 00016/2023/CGPI/PFEINPI/ PGF/AGU and OPINION No. 00019/2023/CGPI/PFE-INPI/PGF/AGU stand out. The first opinion gave a more general focus to the effects of appeals in the sphere of the BPTO, with emphasis on the limits of the full devolution effect of article 212, paragraph 1 of the Brazilian IP Law (BIPL) as opposed to administrative preclusion, highlighting the following points:

• Administrative preclusion: the aforementioned opinion understands that the applicant who does not comply with the act that should be performed, within the legal term, may not perform it in the context of an appeal – such as the presentation of a power of attorney after the legal deadline –, importing the non-cognizance of the appeal due to preclusion, pursuant to article 63, paragraph 2 of Law No. 9,784/99, limiting, thus, the scope of the devolution effect of appeals.
• Plurality of Instances and Mature Cause: possibility of returning the administrative proceeding to the specialized jurisdiction of the first instance for examination, or, if possible, the appraisal, by the second instance, of the petition not dealt with in the examination, this may be decided at appellate level, provided that there has been no preclusion, and observing the Principle of Reasonable Length of process (art. 5,  LXXVIII, Brazilian Federal Constitution).

In the second opinion (OPINION No. 00019/2023/CGPI/PFE-INPI/PGF/AGU), the District Attorney General’s Office focused on applying the conclusions set out in OPINION No. 00016/2023/CGPI/PFEINPI/PGF/AGU in the practical field of analysis of appeals against rejections of patent applications by the BPTO, focusing on the bias of the plurality of instances and the theory of the mature cause to decide practical and technical issues that,  in theory, the administrative preclusion dealt with in the first opinion, combined with the alleged time limit for amendments provided for in article 32 of Law No. 9,279/96 (BIPL) and the limitations to the full devolutive effect of the appeal, would be subject to the following

• That it would not be possible to admit and eventually grant appeals that bring new elements such as modifications in the set of claims, because the Attorney General's Office understands that innovation in the appellate scope is inadmissible, which would include a new claim, even if reducing the scope, by virtue of the administrative preclusion, understanding that "such elements can only be presented in the appeal exactly as they were presented in the first instance,  that is, without modifications."
• Requirements that have not been satisfactorily complied with, in whole or in part, in the first instance, should not be accepted on appeal, recommending to the Attorney General's Office that, in the event of compliance in the appellate stage, there is an administrative preclusion that prohibits the practice of the act after the deadline and, consequently, would prevent admitting a new claim in appeal stage.

In short, such acts limited the amendments previously allowed by a more extensive understanding of the full devolution effect of the appeals before the BPTO – provided that with a restriction of scope – limiting, at least in principle, the possibilities of amending the set of claims in an appeal against rejections.

Two weeks later, in Official Bulletin No. 2764, of December 26, 2023, the BPTO published a new statement, clarifying some important questions about the addition of appeals already filed, the application of the new rules to these appeals and adjustments to the deadline for adjustments:

• It extended the deadline for full applicability from April 2, 2024, rectifying the deadline initially set for February 12, 2024 (60 days after the publication of the first Decision).
• Interested parties may submit adjustment petitions to the appeals filed for complying with the guidelines set out in the Opinions, within the same rectified legal term.
• Provision for issuing an Office Action to be responded by the applicants within the deadline of Law No. 9,279/96, if the appeals filed until April 1, 2024 have not adapted to the provisions of the aforementioned new legal opinions.

However, in view of the discussions raised – interinstitutional meetings, debates and surveys and studies carried out by the associations and by the BPTO itself – the new Decision published in Official Bulletin No. 2773, of February 27, 2024, conferred normative force to OPINION No. 00003/2024/CGPI/PFE-INPI/PGF/AGU, also resulting from a consultation made by CGREC to the Attorney General's Office,  in which there was an intention to clarify and harmonize some points.

These new clarifications bring some provisions that contradict the previous OPINION No. 00019/2023/CGPI/PFE-INPI/PGF/AGU, but were issued as complementary by the Attorney General's Office and thus considered by the Presidency of the BPTO, and then – or at least until further notice – the contents of the three Decisions and Opinions to which they gave normative force must be treated, interpreted and applied systematically and jointly.

In summary, the clarifications provided in the last OPINION No. 00003/2024/CGPI/PFE-INPI/PGF/AGU are brought side by side with the previous provisions in the table below, to assist the interpretation:

OPINION No. 00016/2023 and OPINION No. 00019/2023   

A restrictive amendment shall be accepted on appeal provided that:

2.            The modifications are logical restrictive derivations of the claims which is the subject of the rejection.

4.            Requests for change of nature will not be admitted in the 2nd instance, unless the request is unduly denied in the 1st instance.

"(...) It is incumbent upon the appellate court to evaluate the request for reduction of scope and make the consequent judgment on whether or not the case is one of appellate innovation."

Impossibility of complying with a requirement at the appeal level     

Clarifications of OPINION no. 00003/2024

It is not feasible to present new elements of conviction, such as new data, to support technical effects.   

Clarifications of OPINION no. 00003/2024

Another intriguing aspect was the way in which this transition would take place, since in excerpts of the Opinions there is an express denial that the application of the new rules to appeals already filed under the guidance of the previous interpretation would constitute retroactive application of the new guidelines.

However, the strategies for drafting the application, filing, processing, appealing, among others, have all been adopted to date based on the validity of past understandings, which generated expectations of further clarifications by the BPTO about the treatment of appeals filed until April 1, 2024, which could (and should) be differentiated, given such an impact on filing and processing strategies in Brazil.

However, on March 05, 2024, in RPI 2774, a new statement was issued, this time through ORDINANCE/INPI/No 07, bringing clarifications on the procedure, guidelines and processing of appeals and administrative nullity proceedings within the scope of the BPTO, highlighting the main points below, in summary:

• Possibility of appellate argumentation with the presentation of amendments to the claim set, provided that they are not subject to preclusion, in order to circumvent the objections pointed out in the examination, under the following conditions that complement the previous Opinions:
  • The absence of an explanation about the causal link between the obstacle pointed out by the first instance and the reason why such an amendment would circumvent this objection will trigger an Office Action based on article 214 of the BIPL, if the second instance deems it necessary.
  • The inadmissibility of restrictions that are not expressed in the contested claim set will result in the inadmissibility of the amended claims, but with a prior Office Action (article 214 of the IPL), which may be responded without the possibility of further amendments to the claims set.
• Appeals arising from Office Actions not properly complied with – in principle there is preclusion and unacceptable in appeal, but may be accepted if the appellant clarifies the reason for non-compliance in cases such as:
  • negligible (unnecessary) demand — error of judgment.
  • undue restraint - error of judgment.
  • lack of clarification preventing the understanding of the need for the requested restriction (insufficient motivation) – formal error.
  • lack of clarity in the Office Action — formal error, among others.
• Appeals filed until April 1, 2024, and that do not comply with the guidelines provided for in the legal directives contained in the aforementioned Opinions will be subject to Office Actions, which may be responded within the legal term.

However, such points still leave applicants, agents and attorneys in the area of Industrial Property Law without certainty as to the treatment that will be given to appeals filed until April 1, 2024. This is because item 6.4, paragraph "c", foresees the possibility of Office Actions to be responded by the appellants in the event of an appeal filed after April 2, 2024, however, without the possibility of amending the claims again.

Meanwhile, item 7 of the same Ordinance, dealing with appeals submitted until April 1, 2024, only vaguely provides that if they do not comply with the new parameters, they will be subject to an Office Action, but it is not yet known for sure if this will actually be raised and, if published, if it will follow the criterion of item 6.4,  subparagraph "c" of the same Ordinance (i.e., without being able to present new amendments) or if the Office Action in this case will give special treatment with permission for further clarifications and amendments to the claims set.

Our firm will continue to actively monitor to report new developments, as well as recommend measures for adjustments and adoption of strategies consistent with the new regulations within the established term, always safeguarding the possibility of judicial review of any illegalities.

Luiz Leonardos & Advogados Newsletter

By Paulo Armando Innocente de Souza

Partner in the Litigation Department

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