The Brazilian Patent and Trademark Office (BPTO) established, through Ordinance/INPI/DIRPA No. 14 of August 29, 2024, general rules for the form and content of Certificates of Addition of Invention (C.A.) associated with invention patents.

However, the recent Ordinance/INPI/DIRPA No. 24 of October 22, 2024, now defines the specific procedures for examining such applications, as provided for in article 76 of the Law of Industrial Property (LPI), aiming to protect improvements or developments of an invention in Brazil.

Main Rules for the Technical Examination

According to the new ordinance:

The technical examination of C.A. filings will only begin after the main filing has been granted, subject to payment of the corresponding examination fee.

The same Examiner is recommended to analyze both filings, ensuring uniformity in the process.

The filing for the C.A. must be the same as the filing for the main patent, although the inventors and priorities may differ.

During the technical examination, it will be analyzed whether the subject matter claimed in the C.A. is:

Included in the same inventive concept as the main patent.

Absent in the main patent.

Belonging to the same category of claims as the main patent.

Patentability and Assessment Requirements

Although the inventive step requirement will not be analyzed, the criteria for industrial filing and novelty will be examined. For the analysis, the survey of the state of the art will consider documents published between the filing date of the C.A. and the filing date or priority of the main patent.

The claims must include the subject matter of the main patent in the preamble, followed by the improvement or development introduced after the characterizing expression.

The assessment of the patentability criteria will be excluded if the subject matter of the C.A. falls entirely within articles 10 (not considered inventions) or 18 (non-patentable inventions) of the LPI. However, the analysis of clarity, precision, justification, descriptive sufficiency, and incidence in Article 32 of the LPI will follow INPI/DIRPA Ordinance No. 14/2024 provisions.

The search report will include documents presented in the form of third-party subsidies, search reports, examination or opposition procedures carried out in patent offices abroad, and other relevant documents considered relevant by BPTO.

Publications and Procedures

Once the technical opinion is completed, it will be published in the Industrial Property Magazine (RPI) and may be:

Requirement (order 6.1)

Notification (order 7.1)

Approval (order 9.1)

Rejections will only be published after the second examination of the C.A. request.

Cases for Filing a C.A. Request

The C.A. request may be filed in the following situations:

Final filing or rejection of the main patent (including on appeal).

Approved withdrawal of the main patent.

Change in nature of the main patent from IP to MU.

Declaration of nullity or extinction of the main patent.

Granting the request for lapse of the main patent without appeal within 60 days.

Maintenance of the lapse of the main patent on appeal.

Possibility of Reactivating the C.A. Application

In cases where the C.A. is filed, the applicant may, within 60 days of the publication of the decision, request the unfiling and transformation into an invention patent or utility model upon payment of the due fees, in accordance with article 48 of INPI/DIRPA Ordinance No. 14/2024. The filing will not be conducted if there has already been a request to transform the C.A. into an invention patent or utility model application.