The BPTO has recently published new guidelines on the limits and scope of administrative appeals that affect patent, industrial design and trademark prosecution. The new guidelines will be effective as of April 02, 2024.
Under the current rules, the substantive technical examination of a patent application is carried out by a First Level Examiner, who may issue office actions or unfavorable opinions, allowing Applicants to amend the application to overcome the objections raised (provided that such amendments are grounded on the specification as originally filed and are of limitative nature). If unconvinced, the Examiner issues a non-final rejection decision, triggering a 60-day term for appeals. In addition to challenging the Examiner’s decision, the BPTO’s long-standing practice allowed Appellants to amend the set of claims, as well as submit new evidence and arguments to the Appeal Board to demonstrate that the application meets the patentability requirements.
Under the new rules, Appellants will no longer be allowed to do so. According to the new guidelines, any kind of innovation (e.g., amended claims or arguments not presented at the first level examination) within appellate proceedings will not be accepted, as it will now be considered to be barred by the effects of preclusion (the inability to act due to an omission).
In practice, this means that if an office action or objection was issued by the Examiner and was not overcome during the first level examination, it will not be possible to solve it in appellate proceedings.
While the BPTO has already stated that it could reexamine portions of the new guidelines in the future, it also stressed that Appellants will have until April 02, 2024 to adapt the pending appeals to the new rules.
The new guidelines came as a surprise to IP practitioners and were not preceded by public consultations, as usually adopted by the BPTO. They are also highly controversial as they, inter alia, (i) conflict with article 212, first paragraph, of the Industrial Property Law, that establishes that appeals will be received with full devolutive effects and that all pertinent provisions governing the first level examination are applicable to the appellate stage; (ii) offend the legal certainty principle as they are an abrupt change from the BPTO’s long-standing practice; and (iii) exceed what the BPTO is allowed to regulate, especially when the new guidelines are issued by the BPTO’s president as a result of an internal legal consultation.
Murta Goyanes’ legal team is already working on legal strategies to assist our clients to navigate and overcome the BPTO’s new restrictive rule, and we are also joining forces with the major IP associations in Brazil to modify or revoke the new guidelines all together. For further clarification and assistance on this matter, please contact us at patents@murtagoyanes.com.br.