Filing Divisional Patent Applications in Brazil: Navigating Unique Timing Requirements and Strategic Challenges

Introduction

Brazil presents one of the most restrictive divisional patent application regimes among major patent jurisdictions, creating significant strategic challenges for patent prosecution. While Article 26 of Brazilian Industrial Property Law No. 9,279/96 permits divisional applications until the "end of examination," the Brazilian Patent and Trademark Office (INPI) has implemented narrow interpretations that substantially limit when and how divisional applications may be filed. For biotechnology and pharmaceutical patent applicants, understanding these unique timing requirements and strategic considerations is essential for securing comprehensive intellectual property protection in Brazil's important emerging market.

Critical Timing Requirements

The "End of Examination" Limitation

The most significant timing constraint facing divisional applications in Brazil stems from INPI's strict interpretation of when examination concludes. According to Article 63 of INPI's Ordinance No. 14/2024, examination "ends" when the notice of allowance, rejection, or definitive dismissal is published in the Official Gazette. This interpretation creates a particularly harsh deadline because there is no advance notice system comparable to the European Patent Office's intention to grant notification.

This timing limitation means divisional applications cannot be voluntarily filed:

• After a first instance rejection decision (e.g., equivalent to a “final” rejection in the U.S.) is published;

• During the appeal stage, even though examination continues at the Board of Appeals;

• After a notice of allowance is published; and

• After definitive dismissal. 

INPI recently softened the timeframe limitations for filing divisional applications.  In fact, since 2024, divisional applications can be filed during the appeal stage if an objection is raised regarding a lack of unity of invention (i.e., the divisional is “required” by INPI).

The Examination Request Milestone

A second critical timing consideration involves the deadline for submitting a request for examination. Examination must be requested for patent applications in Brazil within 36 months of filing (or PCT international filing date for national phase entries). Notably, the date of the examination request establishes a fundamental dividing line for the scope and amendment possibilities.

Before filing a request for examination: Divisional applications may include any subject matter disclosed in the original application, with broad claim drafting flexibility.

After filing a request for examination: Divisional claims are strictly limited to subject matter that was claimed in the parent application's examination request, severely restricting strategic options.

Recent Procedural Changes

As of January 2024, INPI now assigns examiners and conducts technical examination based on the examination request date rather than the filing date. This change offers potential benefits for early examination requests, but also increases the urgency surrounding divisional filing decisions, as examination may proceed more quickly than has been historically experienced.

Filing Requirements for Divisional Applications

Substantive Requirements

Brazilian law establishes two mandatory requirements for divisional applications under Article 26:

·       The divisional must make specific reference to the original application, both in the application form and descriptive report; and

·       The divisional cannot exceed the subject matter originally disclosed in the parent application.

In its guidelines, INPI has also established mandatory (and strict) requirements on divisional filings. As previously mentioned, after a request for examination is filed, the claims of a divisional application are bound to the claims submitted with the examination request of the parent application. Additionally, although it is not required that a divisional application address distinct inventive concepts, the claims of a divisional application must not overlap in scope with the claims of the parent application to avoid double patenting.

Failure to comply with the requirements of Article 26 leads to the dismissal of the divisional, while non-compliance with the substantive requirements of the guidelines mentioned above triggers an objection from the INPI, which can be either a rejection or a non-final office action, depending on the scope of the divisional claims.

Prohibited Practices

Second-Generation Divisionals: Although not prohibited by statute, Brazil explicitly prohibits divisional applications from other divisional applications (cascade filing). This restriction significantly limits long-term portfolio development strategies compared to other jurisdictions.

Voluntary Amendments After Examination: Once examination is requested, only amendments that narrow or clarify claims are permitted. Broadening amendments or new claim categories are strictly prohibited, and this limitation extends to divisional applications.

Fee Requirements

Divisional applications are treated as independent applications requiring payment of all applicable fees, including filing, examination, and annuity fees, regardless of fees already paid for the parent application.

Double Patenting Considerations

Article 6 of Brazilian IP Law establishes a "single property" principle, prohibiting the issuance of multiple patents for the same invention. While Brazilian law does not explicitly prohibit double patenting per se, INPI regularly raises objections based on this interpretation. INPI most frequently identifies double patenting issues in:

• Parent and divisional applications with overlapping claim scope;

• Species/genus claim relationships where a broader product claim encompasses a specific product claim; and

• Applications with overlapping scope of protection filed on the same date by the same applicant.

Several strategies can address double patenting concerns during prosecution:

·       Redrafting claims of parent and divisional applications to focus on different embodiments, even with some overlapping matter, while providing technical arguments explaining the differences;

·       Including provisos in claims to exclude subject matter claimed in other family members, such as "with the proviso that the compound is different from compound Y"; and

·       Alternative Implementation Focus: Structuring divisional claims around genuinely different implementations of the disclosed invention rather than mere variations in scope.

Strategic Considerations

Given the severe limitations imposed after filing a request for examination, the most critical strategic decision involves carefully preparing a claim set before submitting the request. Strategic considerations include:

·       Maintaining broad independent claims encompassing all disclosed embodiments and claim categories that may be valuable for future divisionals. While examination costs increase significantly beyond 10 claims, this investment provides maximum strategic flexibility.

·       Filing divisional applications as soon as possible, preferably before the examination request, to preserve maximum claim scope options.

·       Considering carefully the total number of divisional applications needed for complete portfolio coverage, since second-generation divisionals are prohibited.

·       Considering filing divisional applications immediately after responding to an office action, if the response strategy involves arguing against examiner positions, as a rejection decision (e.g., final rejection) would preclude future divisional filings.

Alternative Protection Mechanisms – Certificate of Addition

For improvements or developments to inventions, Brazilian law provides an alternative mechanism called "certificate of addition" that functions similarly to U.S. continuation-in-part applications. Certificates of addition:

• Can be filed anytime during the patent or patent application's lifetime;

• Are only examined after the granting of the main application;

• Allow introduction of new matter to some degree;

• Share the same expiration date as the main patent;

• Require the same inventive concept as the parent patent; and

• Can be converted to independent patents if the original application or patent is rejected, dismissed, or extinct (for lack of annuity payment).

This mechanism provides strategic flexibility when divisional applications are no longer available or appropriate.

Expedited Examination Considerations

When a request for expedited examination is filed, the timing for filing the divisional is key. For expedited examination under the PPH program, divisionals can only be filed after the issuance of the first technical opinion by INPI. Filing a divisional application between the PPH request and the issuance of the first office action will result in an annulment of the accelerated procedure. Hence, for fast-track under the PPH program, divisional applications should be filed before the PPH request, as the first office action issued can be a notice of allowance (i.e., closing the timeframe for divisional filings).

On the other hand, if an examination is expedited under one of the other INPI programs, divisionals can be filed after acceptance in the fast-track program.

Key Takeaways

Timing is Everything: Brazil's restrictive interpretation of "end of examination" requires immediate action upon any first instance decision. The absence of advanced notice systems makes monitoring essential.

Examination Request Creates a Point of No Return: The 36-month examination request deadline fundamentally determines divisional application scope. Strategic claim set preparation before this deadline is crucial for preserving future options.

Comprehensive Pre-Planning Essential: Given prohibitions on second-generation divisionals and post-examination broadening amendments, thorough portfolio planning must occur at the outset of prosecution.

Double Patenting Vigilance Required: Careful claim differentiation and strategic use of provisos can overcome double patenting objections, but proactive planning prevents these issues.

Alternative Mechanisms Available: A Certificate of Addition provides valuable protection for post-grant improvements when divisional applications are no longer viable.

Court Challenges Increasing: Recent Federal Court decisions have challenged INPI's restrictive interpretations, suggesting potential future liberalization of divisional practice, though current restrictive rules must still be followed.

The restrictive nature of Brazil's divisional application practice requires patent applicants to adopt a front-loaded prosecution strategy, making critical decisions early in the prosecution timeline when maximum flexibility remains available. While these limitations create significant challenges, understanding and working within Brazil's unique framework enables skilled practitioners to secure valuable patent protection for complex biotechnology and pharmaceutical innovations.

This post was written by Lisa Mueller and Rob Rodrigues, Brenno Telles, Luiza Cotia, Yasmin Kronemberger, and Tatiana Costa of RNA Law.