BRPTO's Establishes Guidelines For Examining Chemical Patent Applications

Author:Ms Kene Gallois and Samantha Salim
Profession:DANIEL Legal & IP Strategy

The Brazilian PTO published in January 2nd Rule 208/2017, which provides guidelines for the examination of patent applications related to the chemical field. As informed by our firm on 03/31/2017 (click here), a draft version of these guidelines was submitted to public consultation in March 2017. This new Rule is supplementary to the contents of BRPTO's Rules 124/2013 and 169/2016 (Guidelines for the Examination of Patent Applications - Parts I and II, respectively).

Rule 208/2017, in a general aspect, reaffirms the BRPTO's understanding already adopted during the examination of chemical and pharma patent applications. The main aspects can be summarized as follows:

i. Definition of chemical compounds: according to the guidelines, the most accurate form to define a chemical compound is by its chemical structure or chemical name, that is, compound independent claims defined only by its physical, physicochemical or biological properties, as well as by its use or application, are not accepted;

ii. Product by process claims: they are accepted in specific cases in that it is not possible to define the product otherwise;

iii. Esters, ethers, pro-drugs, solvates, hydrates, clathrates, and co-crystals: these terms are interpreted as generic expressions and imprecise to define the subject matter and thus, restrictive definitions, if supported by the application initially filed, may be required when they are present in the claims;

iv. Selection inventions: comparative data between the selected compound(s) of the invention and those having higher structural similarity of the prior art should be presented to assess the inventive activity of the invention;

v. Support for polymorph claims: the specification of a patent application as initially filed must contain identification data obtained from physicochemical characterization techniques for solids. For example, the Single-Crystal X-Ray Diffraction (monocrystal XRD) is sufficient to characterize the crystalline structure of the solid. If the monocrystal XRD technique is not provided, the Powder X-Ray Diffraction (powder XRD) should be used associated with at least another identification method;

vi. Composition definition: a composition independent claim should be defined by its constituents in a qualitative and/or quantitative form. Additional features related to the physical form and application of the composition, for instance, may be presented in the independent or dependent claims; and vii....

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