On September 3, 2024, the rules applicable to patent applications, certificates of addition and divisional patent applications were formally organized, i.e. those that have been divided due to a strategy for their protection in isolation or a need pointed out by the examiner.
This regulation, which was previously separated into different documents, consolidates the provisions previously laid down, with a few additions, in a single regulation No. 14.
With regard to divisional patent applications, the basic provisions continue to require that they be formalized before the examination at first instance is concluded. This means that the divisional application must be submitted before a decision is issued on the original patent application, whether to grant, reject or definitively file it. In addition, the new regulation reinforces other important guidelines, such as:
– The deadline for submitting a divisional application does not apply to ex officio applications for division;
– Any attempt to divide an application that is itself already considered a divisional application will be automatically rejected;
– The divisional application will follow the same procedural stage as the original patent application, which means that the annual fees and examination fees for the divisional application must be paid in accordance with the procedural stage at which the original application is located;
– The matter claimed in the divisional application must be excluded from the original patent application in order to avoid duplication.
Another noteworthy point introduced by Regulation 14 is the requirement for the applicant to submit a comparative copy of the claims contained in the divisional application and those contained in the original application. This copy must clearly indicate the parts removed, as well as the parts added or replaced, thus ensuring greater transparency in the process of analyzing and examining applications.
At the same time, Regulation 16 was published, introducing some changes to the examination guidelines, although without any significant impact on the provisions relating to divisional patent applications.
Although this is not an entirely new regulatory scenario, it is essential that holders of patent applications and certificates of addition are aware of the procedural requirements in force, in order to ensure that their applications are fully compliant with the new guidelines. Failure to comply with these provisions can lead to negative consequences in the processing of applications, which may include requirements that increase examination time or even rejection.
For more information on the impact of these changes on your assets, please contact our team (araripe@araripe.com.br).