On May 27, 2025, the Brazilian Patent and Trademark Office (BPTO) published Ordinance No. 04/2025, establishing a new procedure for cases in which a rejection decision is overturned on appeal and the application is remanded to the first instance for continued examination in accordance with the determinations of the appeal decision.
Once an appeal is acknowledged and the rejection annulled, the first-instance examiner is required to fully comply with the second-instance decision and may not revisit any legal or technical findings already resolved. New third-party observations are no longer accepted following the publication of the annulment decision. Furthermore, voluntary divisional applications are no longer permitted during the continued examination phase, unless a lack of unity was previously identified ex officio.
Although the first-instance examiner may ultimately issue a new rejection decision, this cannot occur before the issuance of an office action and the applicant’s right to respond has been duly observed. Any new objections raised at this stage must be based on legal grounds that were not previously examined or settled in the appeal decision.
The Ordinance does not set a deadline for the BPTO to resume or conclude the examination after remand to the first instance, nor does it provide any mechanism for prioritizing such cases. It also lacks guidance on the types of claim amendments that may be accepted at this stage—particularly whether narrowing amendments based on subject matter disclosed in the specification but not originally claimed will be admitted during the continued examination.
These uncertainties create a scenario in which applicants, despite having succeeded at the appeal level, may still face considerable delays and diminished procedural flexibility.
In light of these concerns, our firm is carefully analyzing the legality and proportionality of the procedural limitations introduced by the Ordinance. We are assessing whether the restriction of rights that are typically available in first-instance proceedings—such as filing divisional applications voluntarily and submitting third-party observations—may conflict with fundamental principles of due process and applicant rights.
We will continue to monitor the implementation of this Ordinance, including judicial developments, internal BPTO measures, and any related legislative updates. Should you have questions or wish to discuss the impact of this regulation on your portfolio or a specific case, we remain at your disposal to schedule a meeting or provide additional guidance.
