Patents - Brazilian PTO Issues New Ordinance On Withdrawal, Abandonment, and Waiver In Patent Proceedings

Brazilian PTO Issues New Ordinance On Withdrawal, Abandonment and Waiver in Patent Proceedings

Ordinance No. 01/2026 consolidates procedural rules governing withdrawal of patent applications and petitions, abandonment of applications, and waiver of granted patents before the Brazilian PTO.

Key Takeaways

• The Brazilian PTO has issued Ordinance No. 01/2026, formalizing the procedures governing withdrawal of patent applications and petitions, abandonment of applications, and waiver of granted patents.

• Withdrawal requests filed within 16 months from the filing or priority date may prevent the disclosure of the technical content of the application, meaning the invention will not become part of the prior art if the application has not yet been published.

• The ordinance also clarifies procedural limitations, including that requests for examination cannot be withdrawn once filed.

Overview

Ordinance No. 01/2026 establishes procedural rules governing the withdrawal of patent applications and petitions, the abandonment of patent applications, and the waiver of granted patents.

Although these mechanisms were already recognized in Brazilian patent practice, the new ordinance consolidates and clarifies the administrative procedures applied by the Brazilian PTO, providing greater transparency regarding how such requests will be analyzed and processed.

Scope of the Ordinance

The ordinance addresses four main procedural situations.

Withdrawal of patent applications

Applicants may request the withdrawal of a pending patent application before grant. Once accepted by the Brazilian PTO, the administrative proceeding is terminated and the application ceases to produce legal effects.

Under the new ordinance, requests filed within 16 months from the filing date or earliest priority date may qualify as a formal withdrawal. If the application has not yet been disclosed, the technical content will not be published and therefore will not become part of the prior art.

If the application has already been disclosed, including through early publication or through the international publication of a Patent Cooperation Treaty (PCT) application entering the Brazilian national phase, the request will not produce confidentiality effects. In these situations, the proceeding will instead be treated as abandoned, and the disclosed subject matter will remain part of the public record.

Abandonment of patent applications

Applicants may formally declare that they no longer intend to pursue a pending application after 16 months from the filing date or earliest priority date, which leads to the termination of prosecution.

In such cases, the application will already have been published and the technical disclosure therefore remains part of the public record and may constitute prior art.

The abandonment becomes effective only after formal approval by the Brazilian PTO. For international applications filed under the PCT, abandonment will only be processed after publication of the decision admitting the application into the Brazilian national phase.

Waiver of granted patents

After a patent has been granted, the patentee may request the waiver of the patent rights. According to the ordinance, the patent is considered extinguished as of the date on which the waiver request is filed, and the subject matter of the patent consequently falls into the public domain. The waiver request will not be approved if it may prejudice the rights of third parties.

Withdrawal of petitions

Specific petitions filed during patent prosecution may be withdrawn, generally provided that the Brazilian PTO has not yet issued a decision on the matter.

Importantly, the ordinance expressly provides that requests for examination cannot be withdrawn once filed.

Practical Distinction: Withdrawal vs. Abandonment

The ordinance clarifies the distinction between withdrawal and abandonment of patent applications, which apply at different stages of prosecution.

• Withdrawal applies when the request is filed within 16 months from the filing date or earliest priority date. If accepted and the application has not yet been published, the technical content will not be disclosed and therefore will not become part of the prior art.

• Abandonment applies when the request is filed after the 16-month period and before the patent is granted. In such cases, the application will already have been published, meaning that its technical disclosure remains publicly available and may constitute prior art.

From a practical standpoint, applicants may decide to terminate an application for strategic or commercial reasons, such as when protection is no longer desired in Brazil.

Procedural Requirements

The ordinance also establishes certain formal requirements for submitting these requests. In particular:

• Requests must be filed through the Brazilian PTO’s electronic patent system.

• The corresponding official fee must be paid.

• When the application or patent has multiple owners, the consent of all co-owners must be provided.

Conclusion

Ordinance No. 01/2026 represents another step in the ongoing refinement of administrative procedures at the Brazilian PTO.

By consolidating the rules governing withdrawal of applications, abandonment of applications, waiver of patents, and withdrawal of petitions, the Brazilian PTO provides clearer procedural guidance for applicants and patentees managing patent portfolios in Brazil.