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On 30 December 2022, the Brazilian Patent and Trademark Office (BPTO) published the minutes of an internal meeting held by its board (by means of SEI INPI # 0747049), in which the BPTO considerably simplified the process of registration of technology transfer, licenses for industrial property rights and franchising agreements.
The changes follow suggestions proposed by experts and were debated and accepted by the BPTO on 28 December 2022. Procedures to implement this decision will begin immediately.
Aside from reducing bureaucracy in the registration of technology agreements in Brazil, these changes represent an important step forward for the BPTO, with the adoption of new understandings and actions aligned with the best international practices, such as those that guide public policies to encourage technological innovation in OECD countries.
The innovations will certainly bring greater dynamism and hasten the signing of these types of agreements by preserving the contractual autonomy of the parties while allowing for the registration of agreements in an easier and less bureaucratic way.
The BPTO reviewed its position regarding two important topics:
New understandings of the BPTO
How it was
How it is now
Acceptance of licensing of non-patented technology (know-how)
The BPTO did not accept the concept of licensing of unpatented technology (know-how) and only recognized the transfer of technology. It considered that there would be an effective transfer of knowledge and that the receiving party could not return the licensed know-how because the receiving party would have absorbed the knowledge throughout the contractual relationship, being free to use it at the end of the contract term.
The BPTO now allows licensing of know-how, in order to stimulate the growth of agreements of this nature signed between national and foreign companies that own technology, as well as to expand opportunities for commercializing industrial and intellectual property rights and innovation in Brazil.
Consultation on the possibility of payments for patent and industrial design applications
The BPTO does not accept payment of royalties for patents and industrial design applications. For trademark applications, the BPTO Office of Specialized Federal Prosecution recognizes that payments were already possible.
The BPTO will shortly forward consultation findings to the BPTO Office of Specialized Federal Prosecution regarding the possibility of extending to patent, industrial design and other IP rights applications and its understanding about the possibility of payments for trademark applications.
We prepared a summary table comparing procedures and formalities previously adopted by the BPTO for registration of agreements with proposed changes in this sense:
Formalities
Comments
Initials in every page (including annexes)
The parties' legal representatives had to initial all pages of agreements submitted for registration, including appendices.
It is no longer required for the parties' legal representatives to initial all pages of agreements submitted for registration.
A party's qualified attorneys in fact must now attest to the accuracy of the information and documents submitted to the BPTO, under penalties set forth by law.
This is yet to be implemented by the BPTO.
Meanwhile, a party's qualified attorneys in fact must attach to the filing request a statement attesting the accuracy of the information and documents.
Witnesses
The signature of two witnesses was required on the agreements.
It is no longer required to have two witnesses when the agreement provides for a Brazilian city as the place of signature.
The insertion of two witnesses in the agreements is an option for the parties and is not mandatory.
Digital signatures
Only physical (in wet ink) or digital signatures were accepted, provided that the latter followed the ICP-Brasil standard.
Digital signatures without ICP-Brasil standard certification are also acceptable now, as well as other means that evidence the authorship and integrity of electronic documents, including certificates issued by other entities, pursuant to article 10 of the Provisional Measure No. 2,200-2/2001, according to criteria under evaluation.
Moreover, e-notation and e-workbook are no longer required for digital signatures.
In cases of physical signatures (in wet ink), notarization and legalization/apostille of documents signed abroad are still required.
Bylaws
The BPTO used to require the submission of the Brazilian licensee's bylaws for registration of agreements.
This document will no longer be required by the BPTO for the registration of agreements.
This has yet to be implemented by the BPTO.
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