BRAZIL Trends and Developments Contributed by: Eduardo Hallak, Juliana Neves, Jorge Tinoco and Lívia Dias, Licks Attorneys
Swiss-type claims, and that the BRPTO could not have rejected the patent application based on Arti ‑ cle 10 (VIII) of the BPS. It is also worth noting that, when presenting its defence brief to the trial court, the BRPTO itself admitted that it had erred in reject ‑ ing the application under the justification that it was a therapeutic method. Considering that the BRPTO had not yet conducted a patentability analysis when the rejection was issued, the court remanded the application to the patent office for examination (this issue is still being debated). In any event, the court was clear regarding the impos ‑ sibility of applying Article 10 (VIII) of the BPS to this application. Therefore, when conducting the new examination on remand, the BRPTO is still free to scrutinise the application on technical grounds, but it may not find it unpatentable as a therapeutic method within the meaning of Article 10 (VIII) of the BPS. Another interesting development in life sciences pat ‑ ent litigation concerns the decision of the Federal Court of Appeals for the 2nd Circuit (TRF-2) in Appeal #0225909-95.2017.4.02.5101 ( BRPTO v Wyeth ). This case also relates to prosecution issues concerning use claims.
The applicant sued after the BRPTO rejected their divisional application due to concerns over the modi ‑ fication of claim scope. Specifically, the rejected application presented use claims, whereas its par ‑ ent application introduced composition claims. The BRPTO alleged that, by changing the claim scope, the applicant tried to circumvent the BPS’ limitation on voluntary claim amendments (Article 32). During liti ‑ gation, the BRPTO went further still, alleging that the applicant was trying to pass unpatentable therapeutic method claims as Swiss-type claims. The court was not moved by the BRPTO’s defence. Both the trial and appellate courts held that Swiss-type claims are allowed and do not constitute unpatent ‑ able subject matter under Article 10 (VIII) of the BPS. Moreover, considering that the divisional application was filed during examination of the parent application and did not introduce new matter, the court also found the application to be compliant with Article 32’s limita ‑ tion on voluntary claim amendments. Overall, these judgments provide an encouraging outlook into the role of the Judiciary as a safety net for applicants when the BRPTO oversteps the limits established by the BPS.
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