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>[26.Oct.10] Divisional
patents aplications and claim amendments
Márcio
Merkl and
Luis Claudio Cunha Vieira
Article
32 of the Brazilian Industrial Property Law (LPI - Law
no. 9279/1996) provides that “in order to better
clarify or define the patent application, the applicant
may make amendments up until the request for examination,
as long as they are restricted to the subject matter
originally disclosed in the application.” Article
26 of the same law provides that “a patent application
may be divided into two or more applications, ex officio
or at the request of the applicant, up until the end
of the examination, if the divisional application: (I)
makes specific reference to the original application;
and (II) does not go beyond the subject matter disclosed
in the original application.”
Based on these articles, the Brazilian National
Industrial Property Institute (INPI/BR) and the patent
professionals used to recognize, in general, that a
patent applicant was allowed to file a divisional application
at is own initiative (i.e. “voluntarily”,
not in reply to an office action requesting the division)
to pursue additional claims if the conditions of art.
26 were met, even if the divisional application was
filed after the request for examination.
After the decision of the Civil Appeal no. 2003.51.01.513584-5
by the Regional Federal Court of the 2nd Region, the
possibility of submitting voluntary amendments to the
patent specification (description, claims and/or drawings)
after the request for examination was substantially
restricted or nearly eliminated. Nonetheless, patent
practitioners raised an issue in regard to the possibility
of pursuing additional claims in a voluntary divisional
application filed after the request for examination
of the original application, considering that art. 26
of the LPI expressly establishes that the applicant
may request the division of the application up to end
of the examination (i.e. after the request for examination).
In view of this issue, the Attorney Office of the INPI/BR
has expressed its understanding that the claims of the
divisional application voluntarily filed after the request
for examination of the original application must be
limited to the subject matter claimed in the original
application (NOTA/INPI/ PROC/CJCONS/Nº 08/2010
dated 06.May.2010). According to this understanding,
voluntary amendments to the claims made by filing a
divisional application after the request for examination
of the original application would violate the time limit
provided for by art.32 of the LPI.
One of the main problems with the understanding of the
INPI/BR Attorney Office is that the subject matter disclosed
in the description of the original patent application,
but not claimed, may not be voluntarily claimed in the
new divided application if the divided application was
filed after the request for examination of the original
application. Undoubtedly, the legality of this combined
analysis of LPI arts. 26 and 32 will raise an immense
discussion, in so far as both articles establish that
the limits of the amendments are in the subject matter
originally disclosed and not in the subject matter originally
claimed.
In spite of the discussion related to the validity of
the claim amendments restrictions imposed by the INPI/BR
in divided applications, applicants should design their
patent prosecution strategy taking into account the
now extremely amplified importance of when to request
examination. Hence, the need for submitting voluntary
amendments for altering the claimed subject matter,
whether in the original application or in the divisional
application, may be a decisive factor for the determination
of the best moment for requesting examination.
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