The Brazilian Patent and Trademark Office (BRPTO) has recently published Ordinance INPI/DIRPA No. 04/2025, which provides important clarifications regarding the procedure for continuing the technical examination of patent applications following the granting of an appeal.

Here are the key points established by the new rule:

1. Return of the Application to the First Instance

If during the appeal phase the examination was deemed incomplete or flawed (notice 100.2), the patent application will automatically return to the first instance for re-examination. It will re-enter the queue of the responsible technical team. Ideally, the same examiner who issued the previous rejection (notice 9.2) will handle this new analysis. If that examiner is unavailable, another specialist in the field will be appointed to ensure technical consistency.

2. Start of the New Technical Examination

When initiating the new examination, the examiner will review the patent application to understand the technical grounds of the second instance decision, identifying any irregularities that may have hindered the continuation of the examination.

It is important to note some limitations at this stage: no new information or third-party documents (such as technical opinions or observations) will be accepted after the appeal decision. In addition, voluntary divisional applications are not allowed, unless a lack of unity has already been raised previously.

The decision issued by the second instance is final and not subject to further appeal, and must be fully observed by the first instance, especially in relation to formal errors or analyses previously omitted. However, the examiner may raise new technical objections, provided they are based on different legal grounds.

3. Issuance of a New Technical Opinion 

A new technical opinion will be issued, expressly referencing the appeal decision (notice 100.2). This opinion will include a complete technical assessment and may lead to a new office action (if further amendments or clarifications are required) or a decision to grant the patent.

It is important to highlight that the application cannot be directly rejected at this stage. The applicant must be given an opportunity to respond.

After the applicant’s response, the application will return to the same examiner for evaluation. A final rejection may only be issued based on matters already raised in the new technical opinion. The procedure may then conclude with a patent grant, shelving, or a new appeal.

Ordinance No. 04/2025 aims to reinforce the principles of due process and legal certainty by establishing clear and objective procedures for the continuation of technical examination after an appeal decision. With this measure, the BRPTO seeks to ensure greater transparency, predictability, and efficiency in the patent examination process.

Please feel free to contact us if you have any questions or would like further clarification on how this new regulation may impact your pending applications.