On 12/30/2022, minutes of the 12/28/2022 meeting of the Board of Directors of the National Institute of Industrial Property (INPI) were published. During the meeting, a series of changes were deliberated and approved that simplify the services related to the registration/annotation of technology contracts before the INPI. The discussion was motivated by claims presented to the institute by the Licensing Executive Society Brasil (LES Brasil) and debates with ICC-Brasil.
The main deliberations of the Board of Directors include:
- Acceptance of licensing of non-patented technology (know-how)
- No impediment to the payment of royalties on patent applications, industrial designs and trademarks.
Regarding the first point, by allowing this type of licensing, the INPI seeks to align its way of working with the best international practices as well as expanding business opportunities involving intellectual property rights that help foster innovation in Brazil.
The conclusions of the Board of Directors were also positive in relation to not impeding the payment of royalties in contracts that request a patent or registration of an industrial design or trademark that has not yet been granted. The aim is at observing economic, scientific, and technological principles in addition to preserving the autonomy of the parties regarding contracts.
With regard to trademarks, it is worth noting that this was already the understanding of the INPI Specialized Federal Attorney. Now however, the institute has undertaken to contact the Attorney to verify the possibility of extending this understanding to patents, industrial designs and other IP assets as applicable.
In addition to these points, the document approved the following amendments in relation to the formal requirements previously required by the INPI for the registration and annotation of technology transfer agreements:
- The notarization and apostille/legalization of foreign signatures will no longer be mandatory
- Digital signatures without ICP-Brasil certificate will be accepted eliminating the need for e-notarization and e-apostille
- It will no longer be mandatory to insert initials on all contract pages
- The INPI will no longer require the signature of two witnesses in technology contracts – though this is an option for the parties
- The presentation of articles of incorporation and legal representation of the legal entity of the assignee, franchisee or licensee, domiciled or resident in Brazil will no longer be required
In general terms, these changes were justified by the presumption of good faith of the acts performed by the parties, the need to harmonize with procedures currently adopted by the Board of Trademarks and Board of Patents of INPI as well as the need to adapt to the provisions of Provisional Measure No. 2.200-2/2001. These recognize valid digital signatures that allow proof of authorship and integrity of documents even if they do not use certificates issued by ICP-Brasil.
According to the document, the formal changes must be implemented immediately or within a short period of time by the INPI. However, the changes will be subject to the agenda of the institute’s new governing body.[1]
To see the complete publication click here (in Portuguese).
Lefosse’s Technology, Data Protection and Intellectual Property team is available to assist our clients in any matters related to the protection of their intellectual property assets.
__________
[1] According to Decree N. 11.340, of January 1st, 2023, the INPI, as well as intellectual property policies, will be part of the Ministry of Development, Industry, Commerce and Services (MDIC).
