14 August, 2025

Brazil regulates reexamination after patent rejection is overturned on appeal

Brazil’s INPI issues Ordinance 4/2025, regulating the reexamination of patent applications whose rejections were overturned on appeal. It defines examiner limits, applicant rights, and procedural restrictions.

On May 27, 2025, the Brazilian PTO (INPI) published Ordinance No. 4/2025, which establishes the procedure for continuing the technical examination of patent applications after the overturn of a rejection decision in the appeal phase.
In practice, the Ordinance regulates the reexamination of an application returned to first instance.

The appeal decision cannot be subject to further discussion by the examiner in the continuation stage of the procedure.

Reexamination conducted by the same examiner

The reexamination will be carried out by the same examiner who rejected the application, under the following circumstances verified by the Board of Appeal:

  1. Formal defects, such as non-compliance with procedural rules.
  2. Unaddressed subject matter in the rejected set of claims during the substantive examination.
  3. New claims introduced during the appeal stage that contain subject matter unexamined during the substantive examination.

Appeal decision is final

The decision of the Board of Appeal is final and irrevocable. This means that the decision in the appeal phase cannot be reopened by the examiner in the continuation stage.

However, the decision does not prevent the presentation of new discussions on conditions and/or patentability requirements that may still impede the granting of the application.

In such cases, a new rejection may only be issued after the applicant has had the opportunity to respond to the new arguments in the technical opinion, through a new office action, continuing the technical examination and allowing for the possibility of a new appeal.

Restrictions on divisionals and third-party observations

At this stage:

  • Voluntary divisionals are not allowed. Divisionals will only be permitted in cases where a lack of unity of invention or a lack of technical-functional unity has been previously identified by the examiner.
  • Third-party observations are not accepted during this reexamination phase.

Source: INPI – Ordinance 4/2025

At H&A, we help you navigate the reexamination process under Ordinance 4/2025—identifying legal constraints, timing strategies, and response tactics for continued prosecution.

Patent Advisor. Lawyer.