**4. Brazilian patent office**

In the Brazilian patent system, the instrument for administrative appeals is provided for in chapter 1 of title VII of Law No. 9,279 of 1996, the Brazilian IP Law (LPI). This chapter of the aforementioned Law addresses the applicable appeals against decisions rendered by INPI, therefore including decisions related to patent applications [11].

Appeals are filed voluntarily by anyone feeling aggrieved in their rights by a decision determining rejection of a patent application, aiming at changing such decision. This filing is made in up to sixty days after the decision rejecting the application is published in the Industrial Property Gazette (RPI),18 through a written petition, observing the administrative principles of publicity and formalism [12].

Paragraph 2 of Article 212 of the LPI makes two important reservations about situations in which it is not possible to appeal against the INPI decisions regarding a patent application. The reservations are as follows: a decision determining the final dismissal of a patent application and a decision accepting the patent application. Therefore, it is clear, regarding the decisions on patentability of a patent application, that only decisions determining rejection of a patent application are subject to appeal [11].

Administrative appeals in the Brazilian patent system have suspensive and full devolutive effects, applying all provisions pertinent to examination in the first instance, in so far as they are applicable. The suspensive effect interrupts the effects of the contested act since the filing of the appeal until final decision, aiming to safeguard the right of the applicant and protect him against the damaging effects resulting from the appealed decision. The two major practical consequences of the suspensive effect are the interruption of the period of prescription19 and the impossibility of filing a lawsuit against the act to be challenged while there is no decision on the appeal [13, 14].

On its turn, full devolutive effect means that the decided matter is fully referred to a higher hierarchical authority for acknowledgement and decision, which for INPI is represented by the President of the independent agency. This implies full review of the merits of the patent application under analysis by a second administrative instance coordination. In this case, as all relevant provisions applied in the examination at first instance are still valid, second-instance examiners may suggest amendments to the application, carry out new searches, and raise new objections to the application, even if these have not been discussed at first instance. Accordingly, the appellant is allowed, at second administrative instance, to come up with new evidence favoring the application patentability, and amend the specifications and its patent claim scope, as long as the same are limited to what was initially disclosed.

In the Brazilian patent system, third parties may be a party to administrative appeals under patent applications. The period therefor is sixty days, and the counter-arguments petition shall be filed under the appeal20 [11, 12].

<sup>18</sup> The Industrial Property Gazette (RPI) communicates all INPI decisions to the general public by means of decision codes.

<sup>19</sup> The 5-year period for filing legal actions is interrupted.

<sup>20</sup> Article 213, LPI. Interested parties shall be summoned to file, within sixty (60) days, counterarguments under the appeal.

*Comparative Analysis of Appeal Procedures in the European, American and Brazilian Patent… DOI: http://dx.doi.org/10.5772/intechopen.98413*

Although decisions on appeals are the responsibility of the President of INPI, as these decisions involve technical matters related to many technologies, the substantive examination is actually performed by a specific coordination office reporting directly to the INPI Presidency – the General Coordination Office for Administrative Invalidation Proceedings and Appeals (CGREC). This coordination office is responsible, therefore, for the administrative processing of patent applications at second administrative instance, for matters related to industrial property.

The two main duties of CGREC are: the issuance of expert opinions in intellectual property matters to support the President of INPI, which is the authority competent by law to register them, and the search to consolidate an administrative case law on the matter21 [15].

CGREC is currently divided into three technical coordination offices and one administrative support division. The CGREC division that deals with patents at second administrative instance is the Technical Coordination for Appeals and Administrative Invalidation Procedures for Patents (COREP), which is composed of eighteen patent examiners [16].

The following section shall present the administrative processing of patent applications at second instance in INPI.

#### **4.1 Second-instance administrative proceedings for patent applications at INPI**

Once a patent application has been rejected at first instance, the applicant may file an appeal, what must be done in up to sixty days, according to article 212 of the LPI. In case the applicant elects to file the appeal, a new procedural phase begins in INPI, which initiates with the admissibility exam; having the application satisfied the formal requirements,22 decision code 12.2 is published in the Industrial Property Gazette.<sup>23</sup>

After publication of the appeal against rejection in the RPI, any interested party may file counter-arguments to the appeal, which are, in general, filed by third parties interested in the patent application, aiming at preservation of the rejection decision on the application. As appeals are fully referred to a higher instance, the second administrative instance completely reexamines the matter of the patent

<sup>21</sup> Article 15, DECREE No. 8,854/2016 – The General Coordination Office for Administrative Invalidation Proceedings and Appeals is responsible for: I – examining and providing technical support for the decisions of the President of INPI in administrative invalidation proceedings and appeals filed pursuant to the prevailing industrial property laws and regulations, and issuing opinions on the matter raised; II – examining and providing technical support for the decisions of the President of INPI in the appeals regarding intellectual property, which registration is under the responsibility of INPI by law; III – guiding and coordinating the systematization, organization, and update of administrative decisions related to intellectual and industrial property, seeking to consolidate an administrative case law on matter; and IV – proposing improvements to the guidelines and procedures for examination of appeals and administrative invalidation proceedings filed pursuant to prevailing intellectual and industrial property laws and regulations.

<sup>22</sup> In the admissibility examination, it is verified whether the appeal is applicable, if it is timely, and if the fee was paid.

<sup>23</sup> Decision code 12.2 indicates that an appeal was filed aiming at a new examination of the matter by the president of INPI.

application, applying all relevant legal provisions employed in the first-instance examination.

In the examination of the patent application by the second instance, the examiner uses all documentation filed at the first instance (expert opinions, petitions, amendments to the application, supporting information, etc.), as well as any new information filed by the appellant in with the appeal petition or by interested parties in the counter-arguments petition, if any. After the first second-instance examination, there are four possible outcomes for the patent application: the appeal is granted (decision code 100), the appeal is denied (decision code 111), non-patentability opinion (decision code 120) or technical requirements (decision code 121). In the decision to grant the appeal, the second-instance examiner understands that the application meets the legal requirements and conditions, draws up an opinion pointing out the parts of the documentation that shall compose the patent, and refers the application for decision of the President of INPI. In the decision to make requirements, like in the first instance, the second-instance examiner understands that the application or part of it has patentability conditions; however, it shows irregularities that prevent patenting as it is. For this reason, they issue an opinion requesting the appellant to meet certain requirements in order for the application to meet patentability requirements and conditions. When the examiner understands that the application does not meet the patentability requirements and/or conditions, he/she may decide to deny the appeal, a situation in which it is no longer possible to discuss it, and the application is forwarded to the President for decision, or he/she may issue a non-patentability opinion, situation in which new arguments and/or documents of the state-of-the-art are presented by the examiner or further clarifications by the applicant may be necessary.

During examination, the second-instance examiner evaluates the same legal requirements and conditions as the first-instance examiner and uses the same Normative Instructions and Examination Guidelines. **Figures 3–5** show a schematic representation of the procedural flow of patent applications at second instance in INPI.

#### **Figure 3.**

*Schematic representation of the procedural flow of patent applications at second administrative instance in INPI.*

*Comparative Analysis of Appeal Procedures in the European, American and Brazilian Patent… DOI: http://dx.doi.org/10.5772/intechopen.98413*

*Schematic representation of the procedural flow of patent applications after technical requirements in INPI.*

**Figure 5.**

*Schematic representation of the procedural flow of patent applications after technical requirements in INPI.*
