TRF2 Recognizes the Possibility of Filing Divisional Patent Applications Until an Administrative Appeal Is Filed

The Second Specialized Panel of the Federal Regional Court for the Second Circuit (TRF2), in ruling on Civil Appeal with Mandatory Review No. 5118116-31.2025.4.02.5101/RJ, held that, notwithstanding INPI/DIRPA Ordinance No. 14/2024, a patent application may be divided until an administrative appeal is filed against a rejection decision.

This understanding is based on a combined reading of Article 26 of the Brazilian Industrial Property Law (the “IPL”), which allows an application to be divided up to the conclusion of examination, and Article 212 of the same statute, which addresses the effects of administrative appeals. The court’s reasoning also cited Article 215 of the IPL (concerning the termination of administrative jurisdiction) and Article 226 (concerning the effects of acts performed by the Brazilian Patent and Trademark Office (INPI)).

On the merits, the divisional patent application was not admitted due to the specific circumstances of the case. Nevertheless, the reporting judge, Federal Appellate Judge Flávio Lucas, emphasized that, provided no new matter is added, dividing a patent application is an option available to the applicant. According to the reporting judge, allowing division until an administrative appeal against the refusal is filed is consistent with the principles of legality, legal certainty for applicants, examination quality, the social function of patents, and free competition.

Why does this matter?

Currently, the division of patent applications before the INPI is governed by INPI/DIRPA Ordinance No. 14/2024, which prohibits division at the administrative appeal stage on the grounds that examination ends with the decision issued at the first administrative level. The decision is not yet final and unappealable and, therefore, is not definitive, as it may be reviewed by higher courts. Moreover, it is not binding. Even so, it provides an important indication of how the Judiciary may rule on the matter and may serve as a basis for challenging the legality of INPI/DIRPA Ordinance No. 14/2024.

Our patent team is available to provide any further clarification on this matter.