This is Part 1 of a 16-part series examining divisional practice in Argentina, Brazil, Canada, China, Europe, India, Indonesia, Malaysia, Mexico, Pakistan, Russia, Thailand, Saudi Arabia, Singapore, the United States and Vietnam (in no particular order).
Filing Divisionals in Brazil
Time Period for Filing a Divisional Application
A divisional application can be filed at any time up until the end of examination. The Brazilian Patent Office (BRPTO or INPI) has developed an odd interpretation of the meaning of “examination”. According to the BRPTO, anything that happens during the appeal stage of an application is not considered to constitute “examination” but rather a “reevaluation” of the case. Examination only takes place during first instance as described below:
- When an Examiner issues a conclusive (“final”) Office Action rejecting the claims as not patentable or allows the claims;
- Thirty days prior to the publication of a conclusive Office Action, such as a rejection decision or the allowance of the application (each conclusive Office Action is published in the Official Gazette (the time period for when such publication will occur cannot be predicted)); or
- Thirty days prior to the publication of the definitive dismissal of the application in the Official Gazette;
whichever occurs last.
Because determining the exact date of the “end of examination” is somewhat complicated in Brazil, two examples will be provided.
Example 1: An Examiner issues a conclusive Office Action on March 10, 2019. The conclusive Office Action is published in the Official Gazette on March 30, 2019 (30 days prior to the publication of the conclusive Office Action is March 1, 2019). Under these facts, the end of examination is March 10, 2019 (the date the Examiner issued the conclusive Office Action since this occurred last). Therefore, the time period for filing a divisional application expired on March 9, 2019, well before the Applicant even knew that its application had been finally rejected.
Example 2: An Examiner issues a conclusive Office Action on March 13, 2019. The conclusive Office Action is published in the Official Gazette on April 15, 2019 (30 days prior to the publication of the conclusive Office Action is March 16, 2019). Under these facts, the end of examination is March 16, 2019 (the date 30 days prior to the publication of the conclusive Office Action in the Official Gazette). Therefore, the time period for filing a divisional application expired on March 16, 2019, again, likely well before the Applicant even knew that its application had been finally rejected.
Additionally, once an application is allowed by an Examiner, it is no longer possible to file a divisional application. Therefore, because it is hard to predict when an Examiner will allow or reject an application, Applicants should consider filing one or more divisional applications when responding to a first Office Action or shortly thereafter.
Claims of a Divisional Application and Double Patenting
The claims of a parent and divisional application cannot be identical as this creates an issue of double protection or double patenting. Additionally, the subject matter of the claims in a divisional application is restricted to the subject matter of the claims contained in a parent application pending up until the time that a request for examination is filed in the parent application. In other words, new categories of claims or embodiments not included in the claims of a parent application before a request for examination is filed will not be accepted by the BRPTO in a divisional application. For example, if a parent application contained claims for a first embodiment at the time a request for examination is made, a divisional application cannot contain claims to a second embodiment. Alternatively, if a parent application contained process claims at the time a request for examination is made, a divisional application cannot contain claims to a composition or product. If an Applicant believes that it may be interested in filing a divisional application at some point in Brazil, a best practice is to include claims to all possible embodiments and types (e.g., product, process, etc.) in order to provide the most flexibility when filing a later divisional application.
As alluded to above, the BRPTO rejects divisional applications that contain new categories of claims and/or new embodiments that were not included in the claims of a parent application before the filing of the request for examination in the parent application. It is the BRPTO’s position that the set of claims in a divisional application must be restricted to the subject matter of the claims pending in the parent application up until the time that a request for examination is filed in accordance with the provisions of Rule #93/2013 that sets forth the BRPTO’s [strict] understanding of the provisions of Article 32 of the Brazilian Industrial Property Law (Article 32 allows an Applicant to make claim amendments up until the date that a request for examination is filed provided that the amendments do not exceed the subject matter originally disclosed in the application). Therefore, it is very important for Applicants to include at least one claim for each embodiment in a parent application before filing a request for examination in order to enable the acceptance of the set of claims in a future divisional application.
Requirements for Filing a Divisional Application
According to Article 26 of the Brazilian Industrial Property Law, a patent application can be divided into two or more applications:
- Ex officio by the BRPTO when technical examination reveals that the claims contain a group of inventions that comprise more than one inventive concept (namely, the claims lack unity of invention); or
- At the request of the Applicant (voluntarily) up until the end of the examination.
When filing a divisional, a copy of the specification, abstract, drawings, sequence listing, if any, a new set of claims and a power of attorney must be submitted. The title of the application and the abstract can be amended to better define the subject matter being protected, in accordance with the preamble of the independent claims. In addition, a divisional application must include a specific reference to the parent (original) application and cannot contain subject matter that exceeds that disclosed in the parent application. The reference to the parent application must be included in the specification after the title and should include the application number and filing date of the parent application. The specification of the divisional application must be amended to include the following cross-reference: “Divided from BR ___ filed on ____ / ____ / ____”.
All official fees (namely, filing fees, examination fees, annuities and the fee(s) for claiming priority, if any) must be paid at the time of filing of a divisional application in order to place the divisional application on the same administrative prosecution level as the parent application.
The filing fees for a divisional application are the same as the fees for an originally filed patent application. Moreover, the examination fee for a divisional application depends on the total number of claims and increases substantially if an application contains a large number of claims. Specifically, after the first 10 claims, there are three ranges of fees for claims (namely, for claims 11-15, claims 16-30 and claims 31 and higher). The claim fees increase with each range until claim 31. After claim 31, the price per claim remains the same.
Finally, Applicants should be aware that the BRPTO does not accept a divisional of divisional. Additionally, with respect to patent term, divisional applications also benefit from the 10-year patent term counted from the granting date, regardless of the patent term awarded to the parent application.
Examination of Divisional Applications
According to Article 27 of the Brazilian Industrial Property Law, a divisional application will receive the same filing date as well as the benefit of any priority claim made in a parent application.
Divisional applications are not given any priority status in terms of examination by INPI. Typically, in many instances, what occurs is that the Examiner will examine both the parent and divisional applications simultaneously and publish Office Actions in both applications since it is necessary for the Examiner to analyze whether the set of claims in the divisional application are in accordance to the provisions of Article 32 of the Brazilian Industrial property Law.
Finally, for pharmaceutical Applicants, when a divisional application is filed after ANVISA (the Brazilian FDA known as the Agência Nacional de Vigilância Sanitária) issues a prior approval decision in a parent application, the divisional application is not remitted to ANVISA for its own prior approval analysis. Instead, the BRPTO considers that the divisional application has already been prior approved by ANVISA and that the (divisional) application should not be reviewed again.
This post was written by Lisa Mueller and by Thaís Cunha, Luiza Cotia and Roberto Rodrigues of Licks Attorneys.