New Industrial Design Regulations

The 2nd edition of the Brazilian Industrial Design Guide was published by the Brazilian Patent and Trademark Office (BPTO) on September 12, 2023, coming into force on October 2nd, 2023.

The most relevant topics are highlighted below (in italic) in order to provide you with an overview of the changes on guidelines concerning industrial designs prosecution in Brazil:

- Possibility of protecting the industrial design of ornamental two-dimensional or three-dimensional configurations applied to electronic devices;

- Possibility of protecting the industrial design of three-dimensional configurations made up of parts with no mechanical connection between them;

- Possibility of protection of the industrial design that includes a trademark or protection of the industrial design of the logo;

- Possibility of protecting industrial designs that include textual elements of any nature, in any language;

- Expansion of the possibilities for representing the object of the registration, especially regarding the representation of unclaimed illustrative elements;

- Publication of the conditions for maintaining priority based on the analysis of the correspondence between this claim and the claim in the registration application in Brazil;

- Possibility of presenting and examining priority documentation through the WIPO-DAS electronic access service;

- Publication of parameters for novelty and originality examinations;

- Incorporation of guidelines for processing designations arising from the Hague Agreement, as established by Ordinance INPI/PR nº 25/2023.

Furthermore, the BPTO also informs the following regarding Industrial Design examination (highlighted below in italic):

- The preliminary examination of the application for Industrial Design registration is carried out in accordance with the regulations in force at the time of the examination, regardless of the date of filing the application;

- Examination of the response to an Office Action is carried out in accordance with the regulations in force at the time of the exam. Such application is independent of the Office Action publication date or the date of the Office Action response petition;

- During the examination of the response to an Office Action referred to in paragraph b), drawings, photographs and other data will be used, whether from the initial petition or previously formulated response to an Office Action, which are in accordance with the provisions of the standard in force in time of the exam. Such use does not prevent the publication of a new Office Action to adapt aspects that are not in accordance with the current standard;

- The application for registration of Industrial Design that had an administrative appeal granted will be returned to the technical examination, which in turn will be carried out in accordance with current regulations, regardless of the date of filing; and

- Once submitted for technical examination, the application for Industrial Design registration that had an administrative appeal granted may be subject to new office actions and, in the event of no response within 60 days, it will be permanently archived based on paragraph 3 of Art. 106 of the LPI.