Divisional patent practice in Brazil: analysis of a developing landscape

The possibility of filing divisional patent applications after the rejection of a parent application has long been embedded in Brazilian patent law. Article 26 of the Brazilian Patent Law expressly authorises applicants to divide a patent application until “the end of the examination”, without distinguishing between first and appellate levels of prosecution. For years, however, this statutory authorisation coexisted with a restrictive administrative rule adopted by the Brazilian Patent and Trademark Office (BPTO), which established the conclusion of first-level examination as the final procedural milestone for division. This tension between statutory law and administrative interpretation ultimately gave rise to a sequence of litigations that reshaped the legal landscape.

Four leading cases filed before the Federal Court for the Second Circuit (TRF2) emerged as the foundational precedents on the matter. These cases, all involving the summary dismissal of divisional applications deemed filed in an untimely manner under the BPTO’s administrative understanding, debated the core legal controversy: whether the “end of the examination” should be understood as encompassing the appellate level, given the full review effect of administrative appeals and resumption of examination.

These four cases were decided at the appellate level in 2023 by the first and second panels of the TRF2. In all four decisions, the panels unanimously held that the BPTO’s administrative rule in force at the time was unlawful, as it violated the constitutional principle of publicity of administrative acts and the right to due process of law. The courts emphasised that the administrative rule selected milestones that were not objectively knowable to applicants and that occurred even before the publication of the decision on the parent application, rendering the exercise of the right to divide practically impossible.

While aligned on the illegality of the administrative restriction, the two panels diverged on the scope of the right to divide at the appellate level: the second panel adopted a broader understanding, holding that, once the administrative appeals entail full review of the merits, examination necessarily continues at the appellate level. As a result, divisional applications can be filed at the appeal level in all cases, whether the division is voluntary or recommended by an office action. According to this understanding, limiting division to first-level examination was tantamount to an impermissible restriction of the statutory provision.

The first panel, in turn, initially endorsed a more cautious approach. Although it also rejected the idea that the examination ends before the publication of the first-level decision, it concluded that voluntary divisions at the appellate level should not be admitted. Under this reasoning, division at the appeal level would only be allowed when it arises from the BPTO’s instructions, while voluntary divisions would be confined to the residual 60‑day term following publication of the first-level decision.

Despite these differences, the four cases played a relevant role in changing the scenario. They were the first decisions rejecting the idea that examination necessarily ends at first level and recognising the continuity of examination at the appellate level. Although rendered in writs of mandamus and therefore lacking erga omnes effect, these court decisions quickly became the primary reference for subsequent litigation. Applicants began invoking them systematically to challenge summary dismissal of divisional applications, and courts are increasingly ruling for the illegality of the BPTO’s rule.

The impact was substantial. Since then, these leading cases simplified litigation strategy, reduced uncertainty, and allowed applicants to rely on a now consolidated line of reasoning. Over time, a growing number of lawsuits succeeded in obtaining court decisions, including preliminary injunctions granted at the appellate level of the judicial branch, which expedited the restoration of divisional applications.

The case law did not remain static. Following the four initial cases, new lawsuits brought before the federal courts gradually expanded the acceptance of the broader thesis.

A particularly significant change occurred in a recent decision rendered by the first panel in an interlocutory appeal challenging the rejection of a preliminary injunction request (Case No. 5016695-72.2025.4.02.0000). The panel embraced the broader reasoning of the second panel, acknowledging the possibility of carrying out divisions of the parent patent application at the BPTO’s appellate level in any case due to the continuation of examination whenever an appeal is lodged.

This shift illustrates the persuasive force of emerging case law and indicates a potential convergence between the panels.

The consolidation of leading cases contributed to more efficient case management and faster resolution of disputes involving divisional applications. It has shortened the path to judicial relief and enhanced the likelihood of obtaining preliminary injunctions. Applicants now operate within a more predictable environment.

In parallel, the BPTO has revised its rule to broaden the circumstances under which divisional applications are accepted after the issuance of a first-level decision from the BPTO (whenever derived from an office action), thereby reducing, in certain cases, the need for judicial intervention.

In conclusion, the four initial cases decided by the TRF2 played a decisive role in redefining the legal understanding of divisional patent applications in Brazil. Since then, courts’ acceptance of the thesis has expanded in a gradual yet consistent manner, culminating in recent decisions even in preliminary injunction requests, reflecting a growing alignment between the panels. Beyond doctrinal clarification, these precedents have delivered concrete procedural benefits.

This article was written with support from Sarah Lucas and Esther Correia, attorneys at law at Licks Attorneys.