The Brazilian PTO held a stakeholder meeting on December 2, 2025, to present its draft regulation on the use of auxiliary requests in patent prosecution. The proposal seeks to formalize a mechanism long discussed in practice but still lacking clear procedural guidance.

Our firm participated actively in the meeting, presenting technical and strategic input to help shape a balanced framework that safeguards applicants’ practical needs and strengthens clarity on how auxiliary requests should operate in Brazil, always with the goal of ensuring the most effective protection pathways for our clients.

Current Landscape

Under current Brazilian practice, applicants may submit multiple claim sets, although the absence of specific rules leads to inconsistent examination. Examiners often focus only on the most restrictive claim set, leaving broader or intermediate versions unanalyzed. Additionally, recent procedural interpretations have limited the ability to amend claims during appeal, reducing strategic flexibility.

Key Elements of BPTO’s Proposal

The BPTO’s draft introduces a more structured model for auxiliary requests, including:

• Up to three requests (including the main request), submitted in a clear order of preference.
• A requirement that all requests share the same inventive concept and remain within the scope of the prior-art search.
• Sequential examination, in which the examiner evaluates the main request first and considers auxiliary requests only if the preceding one is not allowable.
• Acceptance of one claim set precludes examination of the remaining versions.
• The mechanism may be used once per application, during substantive examination, with limits on total claims and potential fee adjustments.

The BPTO also addressed the use of auxiliary requests in divisional applications, proposing a restrictive approach:

• Division before the start of substantive examination: full acceptance of auxiliary requests.
• Division after substantive examination has begun: auxiliary requests allowed only if lack of unity was identified by the Examiner, and if limited to subject matter not covered by the original search.

Our Perspective and Next Steps

From our observation, the BPTO appears to be at an early stage of internal reflection on the contributions received. During the meeting, the Office expressly encouraged feedback from stakeholders, signaling an openness to refine the draft with practical input from users of the system. Nonetheless, several elements of the proposal remain notably restrictive, and our firm will continue to advocate for adjustments that ensure applicants have meaningful and practical tools to manage claim scope and fallback positions.

Our representatives took an active part in the meeting and underscored the importance of a practical, applicant-oriented approach, particularly with respect to maintaining the applicant’s preference order and ensuring that auxiliary requests can operate as effective fallback positions.

We will keep clients informed as the BPTO advances in reviewing the suggestions submitted and as new iterations or clarifications are released. Our firm remains available to review portfolios, assess potentially affected applications, and support strategic planning as the regulatory framework continues to evolve.