**5. Final considerations**

As it was evidenced, although the three patent offices have procedures for appeal against first-instance decisions, there are significant differences in the procedures of each of these offices, starting with the type of proceeding. While in the EPO it is a legal proceeding, in the USPTO and in INPI, it is an administrative proceeding. There are also differences in the types of appealable decisions in each office.

Regarding decisions related to the examination of the application patentability, in Brazil only decisions rejecting patent applications are subject to appeal. In Europe, in addition to decisions rejecting patent applications, the decisions by opposition divisions are also subject to appeal, in other words, those determining rejection of the opposition and maintenance of a patent in its full or amended form or those setting out the cancelation of the patent.

In the specific case of procedures for appeal against decisions rejecting a patent application, these offices also differ regarding the terms, the rules for filing new submissions, the existence of a review mechanism before analysis by the board of appeals, as well as the participation by interested third parties.

Regarding deadlines, the EPO and the USPTO present different deadlines for filing the notice of appeal and the grounds of the appeal. At INPI, both the notice of appeal and its grounds shall be filed together, within a maximum period of two months of the notice of the decision to reject the patent application.

All offices, as long as pursuant to certain conditions, permit amendments to the claims and/or filing of new evidence after the notice of appeal. In the case of the EPO, these submissions shall be filed preferably at the beginning of the appeal procedure, and the boards may accept or not, at their discretion, new submissions during the appeal procedure. In the USPTO, the filing of new evidence and/or amendments to the claims is also subject to certain rules; however, it is important to highlight that these submissions shall be filed before the appeal is sent to the PTAB, and no new submission shall be accepted after that date. In INPI, the filing of new evidence and/or amendments to the claims is accepted throughout the processing of the appeal. However, the filing of amendments to the claims is subject to the provisions in Article 32 of the LPI.24

Unlike INPI, both the USPTO and the EPO have a mechanism for the firstinstance department responsible for the decision to review its own appealed decisions before they are forwarded to the boards of appeal. This mechanism allows for quick resolution of some cases, with significant economy of time and resources.

INPI, unlike the EPO and the USPTO, has a mechanism for participation of interested third parties in the procedure for appeal against the rejection, the so-called counter-arguments to the appeal, which allows any interested parties to submit the reasons why they understand that the decision of rejecting a patent application shall be upheld. Regarding the effects of the appeal, both in Europe as in Brazil, the suspensive and devolutive effects apply.

**Table 1** briefly presents the main differences in the appeal procedures of the three offices analyzed.

Results obtained through a comparative study enabled to identify good practices related to appeals adopted in two of the main patent offices in the world with potential for application in INPI. Among these practices, it is important to note the existence of a mechanism for reviewing the challenged decision by the firstinstance department responsible for such decision, like the interlocutory revision mechanism adopted in the EPO, for example. Implementation of a mechanism similar to that in INPI is currently under evaluation by the Institute. If implemented, INPI may greatly improve its efficiency, considering that decisions that may be easily reversed, whether because of new evidence submitted or because of submission of new patent claim scopes overcoming the objections made in the first instance, may be reversed in a more speedy and economic way, with no need

<sup>24</sup> Article 32 of the LPI provides that amendments to the claims are not accepted when they add information to what was initially provided or broaden the scope of protection of the claims in comparison with the claims filed until the request for examination of the patent application.

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


*1 In all offices, the submission of new claims and/or evidence to the proceeding is subject to specific rules. 2 The results presented in this row of the table refer specifically to appeals against a decision rejecting a patent application.*

#### **Table 1.**

*Comparative table of the appeal procedures in the EPO, the USPTO, and INPI.*

for evaluation by a new examiner or collegiate. It is worth noting that by shedding light on the laws, regulations, and procedures for appeals in three important patent offices, highlighting the practices adopted in each office, this study may contribute for the applicant to increase his/her chances of success in the appeal stage in these three patent offices studied.
