In the competitive world of intellectual property, effective protection of innovations is essential. For inventors seeking protection in multiple countries, the Patent Cooperation Treaty (PCT) offers a simplified path. However, understanding the nuances of voluntary amendments under the PCT is essential to ensure that the patent application complies with the requirements of each jurisdiction, including Brazil. In this article, we will address what voluntary amendments are, when and how to carry them out, and the specific procedures for the national phase at INPI.
What Are Voluntary Amendments?
Voluntary amendments are changes that the applicant can make to the PCT patent application proactively. These amendments can be made both during the international phase and upon entering the national phase, with the aim of adjusting the application to comply with patentability requirements and local regulations.
Amendments During the International Phase: Articles 19 and 34 of the PCT
- Article 19 of the PCT:
- When: Upon receipt of the International Research Report (ISR) and prior to entry into the national phase.
- What Can Be Amended: Just the claims.
- Method: Submission of a new claims sheet and an accompanying letter explaining the changes.
- Article 34 of the PCT:
- When: During the International Preliminary Examination (EPI), which is optional.
- What Can Be Amended: Description, claims and drawings.
- Method: Submission of a PPE order along with desired amendments and a detailed explanation of the changes.
Amendments in the National Phase in Brazil
When the request enters the national phase in Brazil, through INPI, voluntary amendments can be made even if they were not made in the international phase. Here are the steps and precautions to be taken:
- Translation of Documents:
- The claims, description, summary and drawings must be translated into Portuguese accurately and faithfully to the original text.
- Preparation of Replacement Sheets:
- Amendments must be presented on substitute sheets that fully replace the original pages, in accordance with the guidelines of INPI PR Normative Instruction No. 30/2013.
- Important: Replacement sheets must not contain underlined or strikethrough text markings. The text must be presented in its amended form.
- Accompanying Letter:
- An accompanying letter explaining the amendments and detailing the changes made to each section of the order must be submitted.
- Submission to INPI:
- The replacement sheets and the accompanying letter must be submitted electronically through the INPI e-Patents system.
- Technical Examination Request:
- The technical examination request must be made within 36 months of the international filing date. This request may include the amendments made.
- Payment of Fees:
- Please ensure all applicable fees have been paid to avoid issues processing amendments.
Specific Cares
- Consistency with Original PCT:
- Amendments must be consistent with the description and technical content of the original PCT application to avoid adding material, which could result in a rejection.
- Complete Documentation:
- Check that all documents and translations are complete and correct. Compliance with INPI rules is crucial for acceptance of amendments.
Conclusion
Understanding and correctly applying voluntary amendments can be key to the success of your international patent application when entering the national phase in Brazil. At Nascimento Melo Intellectual Property, we are committed to providing the necessary support so that your request is in full compliance with INPI requirements. If you are navigating the complex process of voluntary amendments on the PCT, contact us to ensure every step is completed accurately and efficiently.
