Divisional applications: Procedural manoeuvres pay off

Filing a divisional patent application in Brazil needs a keen understanding of the process and flexibility in the system, as Kene Gallois and Luis Felipe Maciel da Silva of Daniel Law explain.

The decision to divide a patent application can be justified in several ways, and although one possibility is lack of unity of invention detected during the examination phase, most of the time it will depend on the applicant’s commercial strategies.

Once filed at the Brazilian patent and trademark office (INPI), the divisional application will follow the regular course of action, ie, it will be examined independently of its parent application.

Since a divisional application is considered to be in the same procedural phase of its parent application, it is true that the INPI tends to conclude the examination phase of both applications at the same moment.

Nevertheless, a consideration should be made: there is the possibility that a divisional application has a different term of protection than that of its parent application, if, for instance, they are decided at different and distant times, and this may impact the applicant’s patent portfolio in Brazil.

Before deciding whether to file a divisional application, three commonly asked questions arise:

1. What is the maximum timeframe for filing a divisional?
2. What subject-matter may be contained in the divisional? and
3. When is the best time for filing a divisional?

Time limit for filing Brazilian divisional applications

According to Brazilian IP Law # 9,279/96 (BR IP Law) a patent application can be divided into one or more applications by law up to the conclusion of the examination of the parent application, which is deemed by the INPI to be the date stated on the examiner’s conclusive report on the patentability (decision of allowance, rejection or final dismissal of the parent application), or the 30th day preceding the publication of such conclusive report in the Brazilian Industrial Property Journal, whichever occurs last.

"The date of the request for examination of the parent application is a crucial point for analysing divisional applications."

Although the understanding of these time limits is clear, questions regarding the possible scope of protection of a divisional application are frequently raised, especially if the request for examination request has already been submitted for the parent application.

Subject matter of the Brazilian divisional application

The first analysis to be made regarding the acceptance of the subject matter claimed in a divisional application is the confirmation of when such divisional application was filed, ie, before or after the examination request of the parent application.

In this context, the following definitions should be considered:

• Matter disclosed: the entire content of the patent application submitted by the applicant at the time of filing, namely: specification, claims, drawings (if any), abstract or sequence listing (if any);
• Claimed matter: claims contained in the claim set. The subject matter disclosed is broader, that is, not everything encompassed by the specification is part of the claim set filed by the applicant; and
• Valid claim set: it refers to the claim set for which the examination was requested.

According to the current Brazilian practice, grounded on the provisions of article 32 of the Brazilian IP Law, requesting amendments aiming at broadening after the examination, altering the scope of protection or including new categories of claims are not acceptable. In this sense, one of the main usual applicant’s doubts is whether this understanding should be extrapolated to divisional applications which were filed after the examination request of its parent application.

According to resolution # 93/2013 (guidelines on the applicability of said article 32), item 2.6, the claim set for which the examination was requested in the parent application will be considered the valid one for such analysis.

This means that the claim set of the divisional (when filed after the examination request of its parent case) should be based on the claim set of its parent case at the time of requesting examination, ie, if amendments are submitted along with the examination request, such amended claim set is considered the valid one; otherwise in case of no amendments the claim set which served as basis for the examination request and to which official examination fees were paid for is considered the valid one.

In this sense, according to the current INPI’s understanding on this matter, the valid claim set is that submitted along with the examination request, or the one previous pending and that served as basis for the examination request.

Another important point is that double patenting is not permitted in Brazil. In view of this, the claimed matter of the divisional application, filed after the examination request of the parent application, should be based on the claim set of its parent case at the time of requesting examination and also should not be encompassed by the claimed matter of the parent application, if granted.

In sum, the date of the request for examination of the parent application is a crucial point for analysing divisional applications, since:

• If a divisional application is filed after the examination request of its parent case, it must be restricted to subject matter claimed in the claim set valid of its parent application; or
• In case a divisional application is filed before the examination request of its parent application, the main requirements regarding the scope of protection of said divisional are the limitation to the subject matter disclosed of the parent application as filed and the absence of double patenting.

Best time for filing a Brazilian divisional application

In view of the restrictions applied to the filing of divisional applications after examination request of the original application, aiming at maximising the scope of protection, it is advisable to file divisional application(s) prior to the examination request of its parent case, wherein any claim set—provided that it is fully supported by the application as originally filed—would be in accordance with the provisions of article 32 of Brazil’s IP law. It is also important to note that filing divisional application from a divisional application is not acceptable under Brazilian practice.

If the divisional is intended to be filed after the request for examination of its parent application, the recommendation would be submitting a claim set in connection with the parent application at the time of requesting examination thereof encompassing all desired claim categories/embodiments duly supported by the application and that independent claims within the claim set are worded as broadest as possible.

The above strategies are very useful considering the strict positions adopted by the INPI and how the economic interests based on a certain invention may change.

Kene Gallois is head of life sciences at Daniel Law. She has more than ten years’ experience in the biological science field. She graduated from the Fluminense Federal University (UFF) and has a Master’s degree from the Oswaldo Cruz Foundation (Fiocruz) in cellular and molecular biology. She can be contacted at: kene.gallois@daniel-ip.com

Luis Felipe Maciel da Silva is a patent specialist at Daniel Law. He graduated from the Federal University of Rio de Janeiro (UFRJ) with an exchange to Monash University (Australia) and has almost five years’ experience acting as a Brazilian patent specialist in the chemistry and life sciences fields. He can be contacted at: luis.maciel@daniel-ip.com