The Brazilian Patent and Trademark Office (BPTO) published in Official Bulletin no. 2,838, of May 27, 2025, Ordinance no. 04, which establishes the procedure for continuing the technical examination of patent applications in the first instance after a decision in the second instance (appeal phase) is issued. In practice, the Ordinance regulates the reexamination of an application back in the first instance after the overturn of a rejection decision.
An application can be sent back to the first instance under the following circumstances:
- Presence of formal mistake;
- The rejected set of claims comprises subject matter that was not discussed during the technical examination in the first instance; or
- The Appellant submits a new set of claims comprising subject matter that was not examined in the first instance.
The contents of the second instance decision cannot be rediscussed in the continuation of examination in the first instance. Nevertheless, new discussions regarding the patentability of an application can be made, provided that their grounds differ from those decided in the second instance. In any case, the Applicant is entitled to submit its remarks regarding any new facts, such that the application can only be rejected after said remarks are submitted.
Third-party observations cannot be filed during the continuation of examination in the first instance, nor can the application be voluntarily divided. On the other hand, the change of nature of the application (from patent of invention to utility model and vice-versa) can be requested by the BPTO.
