Patent applications often evolve after filing. New prior art may emerge, commercial priorities may change, or applicants may identify opportunities to strengthen claim language before examination begins.
It is also important to consider the rules and prohibitions relevant to each country, such as the structure, the dependency relationship between claims, and other particularities that may hinder the examination of the application, according to local practice.
Voluntary amendments are changes made by the applicant to the patent application without a request or requirement from the IP Office. These amendments typically involve modifications to the claims, although applicants may also adjust other parts of the application when permitted by law. Unlike amendments submitted in response to an office action, voluntary amendments are initiated by the applicant as part of a proactive patent prosecution strategy.
Fortunately, Brazilian patent law allows applicants to voluntarily amend their patent applications during a specific period of prosecution. Understanding when these amendments can be made and their strategic value can significantly improve the chances of obtaining meaningful patent protection before the Brazilian Patent and Trademark Office (INPI).
When can Voluntary Amendments be filed in Brazil?
One of the most important aspects of Brazilian patent practice is the deadline for voluntary amendments.
Applicants may voluntarily amend the claims until the payment of the examination request fee.
Since examination in Brazil is not automatically initiated upon filing, applicants have a period of up to 36 months from the filing date to request substantive examination. During this period, voluntary amendments may be submitted to refine the claim set and better position the application for examination.
After the examination fee has been paid, amendments become considerably more restricted. At this stage, claim amendments are generally accepted only when they are intended to comply with an INPI requirement or to limit the scope of protection originally claimed.
If the voluntary amendment is made after requesting the substantive examination, that amendment will probably fall under the prohibition of article 32 of the Brazilian IP Law, which deals with the “addition of matter”.
Why consider Voluntary Amendments?
Many applicants file patent applications before having complete information about the relevant market, competitors, or prior art landscape.
As a result, voluntary amendments can provide valuable opportunities to strengthen an application before substantive examination begins.
Common reasons include:
* Clarifying claim language;
* Addressing prior art identified after filing;
* Improving claim consistency;
* Aligning the Brazilian application with examination results obtained in other jurisdictions;
* Reducing prosecution risks before examination starts.
When used strategically, voluntary amendments may help avoid objections and streamline prosecution before the INPI.
Aligning Brazilian applications with Foreign Prosecution
For multinational applicants, voluntary amendments can be particularly useful when corresponding applications are under examination abroad.
By reviewing examination results issued by offices such as the USPTO, EPO, JPO, or CNIPA, applicants may identify claim language that has already been considered allowable elsewhere.
Before requesting examination in Brazil, it may be advantageous to adjust the Brazilian claim set accordingly, creating a stronger starting point for examination before the INPI.
This approach can be especially relevant for applicants planning to use mechanisms such as the Patent Prosecution Highway (PPH).
Limitations applicants should understand
Although voluntary amendments provide flexibility, Brazilian law does not permit applicants to introduce new matter into the application.
Any amendment must remain fully supported by the content originally disclosed in the specification.
Applicants should therefore carefully evaluate whether proposed changes merely clarify the original disclosure or improperly attempt to add new technical information.
Failure to comply with these requirements may result in objections or rejection of the amended claims.
Conclusion
Voluntary amendments represent an important but often overlooked feature of Brazilian patent practice. By allowing applicants to refine their claims before substantive examination begins, they create opportunities to strengthen patent protection, address prior art concerns, and align prosecution strategies across multiple jurisdictions.
Because amendment opportunities become significantly more limited after the examination request is filed, applicants should carefully review their patent portfolios and consider whether adjustments may be beneficial before this deadline expires.
About the Authors
Rafael Garutti is an Attorney at Law and Partner at CNV IP Law Firm. Recognized in the IAM Strategy 300, Rafael has nearly 16 years of experience advising multinational companies, foreign law firms, and innovative businesses on intellectual property protection in Brazil. His practice includes IP prosecution, strategy and risk management.
Lara Damim is a Patent Agent and Chair of Global Practices at CNV IP Law Firm, focusing on patent prosecution, translations, and strategic protection of innovations before the Brazilian Patent and Trademark Office (INPI). Her practice of more than 27 years in the IP field includes assisting domestic and international clients in navigating complex patent procedures and examination requirements in Brazil.