How third-party public comments influence patent examination outcomes in Brazil
During the examination process of Brazilian invention patent applications, there are three stages where third parties can submit substantive arguments as third-party public opinions to influence the examination results:
- Submitting pre-grant opinions at the first examination stage
- Appealing a patent granted at the time of the grant announcement
- Post-grant opposition
1. Pre-authorization opinion
According to Article 31 of the Brazilian Intellectual Property Law, any interested third party may submit documents and arguments to assist the Brazilian Patent and Trademark Office in conducting technical examinations before the end of the examination. The meaning of "end of examination" is generally understood as the date of notification of authorization, rejection or final abandonment.
Therefore, during the examination process of a patent application, i.e. the first examination stage, any third party can submit prior art documents and evidence for an opposition request. The third party can introduce decisions/opinions issued by foreign patent offices, or other prior art.
Although the BRPTO is not obliged to forward pre-grant comments to applicants, examiners are obliged to consider all third-party public comments.
II. Reasons for Rejection/Opposition
When the examiner of the BRPTO rejects a patent application, i.e. the first instance decision, the applicant has 60 days to file an appeal. The BRPTO will publish the appeal in its Official Gazette and any third party has 60 days to file grounds for opposing the appeal.
It is important to note that the appellant is not formally allowed to respond to any opposition brief. If the appellant files a “response brief,” the BRPTO will not consider it as “untimely filed.”
According to Article 214 of the Brazilian Intellectual Property Law, the BRPTO can still issue an office action at the appeal stage, giving another 60-day deadline when analyzing the briefs of appeal and/or opposition. However, at this stage of the proceedings, only the appellant can file a response. Any response filed by a third party will be considered "untimely" and rejected. Therefore, any interested third party can only participate in the appeal stage by filing an opposition appeal brief. Any additional response will not be allowed and will therefore not be accepted and considered by the BRPTO.
3. Objection after Grant
Article 51 of the Brazilian Intellectual Property Law provides that any third party may file a post-grant opposition request within 6 months after the patent is granted. The objection requester can present new arguments and new prior art to oppose the grant of the patent. When a post-grant opposition is filed, the BRPTO will publish the opposition request in its official gazette, after which the patent owner will have 60 days to submit a response.
After analyzing all submitted arguments, the BRPTO will issue an interim examination opinion on the substance of the post-grant opposition. Both third parties and patent owners may submit responses to the interim examination opinion within 60 days of notification in the Official Gazette.
Subsequently, the BRPTO's chief examiner will analyze and decide on the final examination opinion, ending the post-grant opposition procedure. The chief examiner is not allowed to propose new technical solutions in his response to the interim examination opinion, and only the arguments and documents submitted by third parties and patent owners will be considered in the final decision.
