por Marcello Ávila Nascimento
Brazil is one of the most consequential jurisdictions for any global trademark or patent portfolio — and one of the most procedurally demanding. The combination of a high-volume examination backlog, locally specific procedural rules, and a regulatory environment that has undergone significant reform in recent years means that effective prosecution in Brazil requires more than a correspondent who forwards documents. It requires a partner who understands the system from the inside.
This guide outlines the areas where international IP firms and patent attorneys most frequently encounter unexpected obstacles — and where a specialist Brazilian associate adds the most value.
The Madrid Protocol: Local Procedural Rules That WIPO Does Not Relay
Brazil joined the Madrid Protocol in October 2019. International trademark designations have since become more accessible — but a structural feature of INPI’s system integration creates a gap that regularly catches foreign associates off guard.
All INPI office actions — formal deficiencies, examination objections, opposition notifications, and publication for opposition — appear exclusively in INPI’s weekly Official Gazette (Revista da Propriedade Industrial). These communications are not transmitted to WIPO for relay to the international rights holder. Missing a Gazette publication can result in uncontested refusal or cancellation of the designation, with no remedy through WIPO channels.
Brazil also declared an 18-month refusal period under Article 5(2)(b) of the Madrid Protocol — six months longer than the default — and declared that provisional refusals based on opposition may be notified after the 18-month period expires. A designation that clears examination without refusal is still exposed until the 60-day opposition window closes. Silence from WIPO after 18 months does not mean the designation is clear.
Active Gazette monitoring by a local correspondent with a clear relay protocol is not optional — it is the mechanism that makes Madrid protection in Brazil operationally reliable.
PCT National Phase: The Examination Request as a Strategic Decision
For patent attorneys, PCT national phase entry in Brazil involves more than translation and format compliance. The most consequential decision in Brazilian patent prosecution is often underestimated: the examination request.
Brazil requires a formal examination request within 36 months of the filing date (or PCT international filing date). This deadline is absolute. More critically, the claims submitted with the examination request define the ceiling of protection available in any subsequent divisional application. Before the examination request, an applicant has broad claim drafting flexibility. After it, divisional claims are strictly limited to subject matter explicitly claimed in the examination request submission. Since January 2024, INPI assigns examiners based on the examination request date rather than the filing date — which means the strategic window before examination begins is shorter than historical timelines suggested.
A specialist associate conducts more than a pre-filing format check. They assess unity of invention risk, review claim scope against INPI’s examination standards, and advise on the breadth and structure of the claim set to be submitted with the examination request — decisions that determine prosecution flexibility for the life of the application.
Pharmaceutical and Life Sciences: ANVISA After the 2021 Reform
The Brazilian IP landscape for pharmaceutical and life sciences patents changed fundamentally in August 2021. Law No. 14.195/2021, in force since August 27, 2021, definitively eliminated ANVISA’s prior consent requirement for pharmaceutical patents — a mechanism that had for decades required patent applications in this sector to obtain approval from the National Health Surveillance Agency before INPI could grant the patent. That requirement no longer exists.
Pharmaceutical and biotechnology patent prosecution is now handled entirely by INPI under ordinary examination procedures. The legislative change removed the most significant source of delay and legal uncertainty specific to this sector, and applications that had been pending in the ANVISA examination queue were returned to INPI for substantive examination.
ANVISA retains a residual role: it may submit technical opinions as third-party observations on applications of public health interest. INPI is not bound by these opinions, but they may be considered during substantive examination. For strategically sensitive applications — particularly those covering products of direct relevance to the Brazilian public health system — this possibility warrants monitoring.
Two areas of active development require sector-specific attention. INPI opened a public consultation in 2025 on draft amendments to its chemistry examination guidelines addressing new use claims, signalling a tightening of enablement requirements. And post-grant opposition — available within six months of patent issuance — is regularly used by generic manufacturers to challenge pharmaceutical patents shortly after grant. Both require Brazil-specific prosecution strategies that differ from those applied in other jurisdictions.
Why a Specialist Boutique Associate
International IP firms increasingly look for Brazilian associates who offer direct senior-level engagement, technical depth across both trademark and patent prosecution, and the operational infrastructure to monitor INPI publications consistently and respond within tight deadlines.
Ávila Nascimento Advocacia is a boutique practice specialising in Intellectual Property, based in Rio de Janeiro. Our founding partner, Dr. Marcello Ávila Nascimento, is a registered Industrial Property Agent before INPI (registration 0636, since 1998), OAB/RJ member no. 128.829, and an associate of both ABPI and ABAPI. Every matter is handled at partner level — not delegated.
We act as Brazilian correspondent for IP firms across Europe, North America, and Asia, covering trademark prosecution, Madrid Protocol designations, patent prosecution and PPH requests, opposition and nullity proceedings, non-use cancellation, and portfolio strategy.
We are available for a direct consultation on any pending or prospective Brazilian matter.
📩 info@avilanascimento.adv.br 📞 +55 21 3802-3838 | +55 21 97272-8787 🌐 avilanascimento.adv.br
