"The BPTO’s new guidelines significantly limited the possibility of amending patent claims"

Brazil, a top ten in the global economy, holds a patent system rooted in history dating back to 1808. According to the most recent study from December 2024[1], the Brazilian Patent and Trademark Office (BPTO) processed 27,701 applications, with 6,371 resident applications and 21,330 non-resident applications. Although these figures remain relatively modest compared to previous years, Brazil continues to stand out as the undisputed leader in Latin America and the Caribbean, with a significantly higher number of applications than any other country in the region. Recent advancements within the Brazilian Patent System reflect successful endeavors to streamline and expedite the patent examination process. In recent years, there has been a heightened focus on alleviating the backlog of pending patent applications, with initiatives directed toward enhancing efficiency and reducing the time required for patent grants.

Within the efforts to streamline patent application procedures, a pivotal and controversial development emerged on December 12, 2023, when the BPTO issued Opinion No. 19/2023, wielding significant influence over patent application progress. The opinion stipulated that applicants cannot introduce modifications during an administrative appeal against their application's rejection. This prohibition extended to presenting data supporting technical effects, modifying the specifications, and amending the claim set, even if the amendments aimed to narrow the patent application's scope or enhance clarity in the claimed subject matter.

In response to concerns raised by civil society — particularly criticisms that the BPTO’s restrictions deviate from international patent office practices and contradict federal regulations and legal precedents — the BPTO undertook a series of actions to address the issue. These included multiple meetings with the Brazilian Industrial Property Agents Association (ABAPI) aimed at bridging certain regulatory gaps. However, despite these efforts, progress has been limited.

Thus, Opinion No. 19/2023 marked the first in a series of initiatives by the BPTO on this matter. It was followed by several key developments: the Decision Memoranda issued on December 12 and December 26, 2023; Opinion No. 03/2024, released in February 2024; the Decision Memorandum of February 27, 2024; and Ordinance No. 7, published in March 2024. This sequence of measures culminated in the issuance of Ordinance No. 10/2024 — currently in force — which introduced the so-called “new guidelines.”

The BPTO’s new guidelines significantly limited the possibility of amending patent claims during the appeal stage, representing a substantial shift in Brazil’s patent prosecution framework. In addition, the guidelines introduced transitional provisions that, in practice, retroactively applied the more restrictive rules to administrative appeals filed before the guidelines came into effect. In other words, administrative appeals faced the risk of being rejected because they were not filed in accordance with the new, more restrictive rules on amendments — rules that applicants could not have anticipated at the time of filing.

However, discussions on the matter are still ongoing, and several writs of mandamus have been filed by Di Blasi, Parente & Associados on behalf of applicants, aiming to prevent the application of the new guidelines to pending appeals that were submitted under the previous rules. As a result, favorable outcomes were secured in approximately 80% of the cases handled, and it is expected that other judges will follow these precedents, ensuring that the previous guidelines are applied to the review of administrative appeals filed before the new guidelines came into force. This success is particularly noteworthy given the intense debate and resistance from various intellectual property associations and stakeholders. It also highlights that, within the context of litigation, Brazil's democratic framework and independent judiciary uphold the rule of law, showing no bias against foreign applicants or patent rights. Patent litigation is a common occurrence in the country. It's essential to underscore the profound respect accorded to classified information by the courts. Judges possess the authority to determine the confidentiality of case files, and it is unusual for a judge to reject a well-grounded request for confidentiality.

Patent litigation in Brazil follows a dual system, with Infringement Lawsuits (including Declaratory of Non-Infringement Lawsuits) filed in State Courts, and Invalidity Lawsuits lodged in Federal Courts. State Courts in São Paulo, Porto Alegre, and Rio de Janeiro, along with the Federal Court of Rio de Janeiro, have judges specialized in IP Law. Proceedings before these judges tend to be swifter and more accurate, although these judges lack a technical background and typically appoint an independent expert for technical analysis. While judges technically can disagree with the expert, it is uncommon, as most judges heavily rely on the technical report in their final decisions. The timelines and costs associated with patent litigation vary with case complexity, but court and attorney fees are notably lower compared to the U.S. or Europe.

Invalidity lawsuits can be filed with two distinct objectives: (i) to declare a granted patent wholly or partially invalid for failing to meet legal requirements; or (ii) to challenge an act or decision by the BPTO — such as the rejection of a patent application — on the grounds of formal or substantive errors. In the first case, the lawsuit must be brought against both the BPTO and the patent holder. In the second, it may be filed solely against the BPTO. Notably, there is no indication that the BPTO retaliates against companies that pursue legal action against the office. Despite the prevalent focus on failure to meet patentability requirements in most Invalidity Lawsuits, other grounds for patent invalidity exist. A patent granted in violation of any rule established by the IP Law can be invalidated. For instance, if a granted patent does not correspond to a single inventive concept, it may face invalidation. Additionally, a patent could be invalidated if a patent holder amends the claims to widen their original scope or divides the application after the examination commences, although courts and the BPTO are engaged in ongoing discussions regarding the limits to this rule.

Moreover, it is possible to partially invalidate a patent. According to Article 46 of the Brazilian IP Law, a patent can be invalidated either in whole or in part. This means that if certain claims or aspects of a granted patent fail to meet the legal requirements—such as novelty, inventive step, or sufficiency of disclosure—only those specific claims can be declared invalid, while the remaining valid claims continue to be enforceable.

This provision allows for a balanced approach, ensuring that patent rights are upheld only to the extent they comply with the law. Partial invalidation protects third parties from being unfairly restricted by overly broad or improperly granted patent claims, while maintaining legal certainty for patent holders regarding their legitimate rights.

For foreign companies and legal practitioners, understanding this possibility is crucial when evaluating patent enforcement strategies and risks in Brazil, as it reflects the country’s nuanced and fair approach to patent validity.

The possibility of a defendant in a patent infringement lawsuit invoking the invalidity of the asserted patent as a defensive ground is currently under discussion by the courts. Presently, most court precedents determine that the invalidity of a patent can only be deliberated in an Invalidity Lawsuit before the Federal Court.

Infringement Lawsuits, on the other hand, typically hinge on Article 42 of the Brazilian IP Law empowering patent holders to prevent third parties, without authorization, from producing, using, offering for sale, selling, or importing the patented product or a product obtained directly through a patented process. Infringement can be either literal or by equivalence. Additionally, committing crimes against patent rights, such as manufacturing, or importing patented products, is a punishable offense. The patent holder is granted the right to prevent third parties from contributing to such acts, including supplying components or materials for patented products or processes.

Lawsuits aiming to declare non-infringement are usually filed on a strictly technical basis, asserting that a given product falls outside the scope of a particular patent's claims.

In both infringement and invalidity lawsuits, court-appointed experts play a pivotal role. These experts are tasked with assisting the judge, drawing on their technical background to deliver opinions collaborated upon with technical assistants appointed by the parties involved.

Consequently, a key challenge in patent litigation in Brazil lies in persuading the expert of one's legal and technical stance, a feat more likely achieved when presenting technical opinions from distinguished specialists in the case files.

Preliminary injunctions emerge as a critical legal recourse outlined in Brazilian IP Law, crafted to swiftly address instances of patent infringement, and forestall irreparable harm to patent holders. Recent developments within the domain of Standard Essential Patents (SEPs), bound by Fair, Reasonable, and Non-Discriminatory (FRAND) commitments, reveal that the Brazilian legal framework, as interpreted in recent court precedents, asserts that such commitments do not hinder SEP owners' right to actively pursue and secure preliminary injunctions.

To secure an injunction, the plaintiff must substantiate their likelihood of success in the merits and urgency, but no evidence of public interest is required. Injunctions may be granted even before the defendant is formally notified or summoned and may include search and seizure measures. The strategic presentation of technical and legal opinions early in both invalidity and infringement lawsuits enhances the prospects of obtaining an injunction.

[1] https://www.gov.br/inpi/pt-br/central-de-conteudo/estatisticas/arquivos/publicacoes/boletim-mensal-de-pi_resultados-de-dezembro-2024.pdf/@@download/file