“Recordal of Agreements at the INPI: update and necessary...

“Recordal of Agreements at the INPI: update and necessary requirements

for a fast procedure”

Lia de Medeiros

General Coordinator of Technology Contracts

Instituto Nacional da Propriedade Industrial

INPI

The purpose of the talk is to present the role of the INPI in licensing, transfer of

technology and franchising agreements, to furnish an overview of the Brazilian

legislation regarding this matter, showing the types of contracts covered by the existing rules, the requirements for

contracts involving non-residents in Brazil and procedures for registration at the INPI

Agenda

• The role of the INPI in the contracts of intangible assets

• Legislation and effects of the recordal

• Contracts related to intellectual property

• Legal status of the object of contracts

• Types of contracts covered by the Brazilian legislation

• Requirements for contracts involving non-residents in Brazil

• Procedures for registration of contracts at INPI

The Role of the INPI in the Contracts of Intangible Assets

The role of the INPI in the contracts of intangible assets

Legislation and effects of the recordal

Contracts related to intellectual property

Legal status of the object of contract

Types of contracts covered by the legislation in Brazil

Requirements for contracts involving non-resident in Brazil

Procedures for registration of contracts in INPI

• The main purpose of the INPI is to execute the norms governing industrial property bearing in mind its social, economic, legal and technical function, as well as rule on the advisability of signing, ratification and termination of conventions, treaties, and agreements on industrial property.








Law nº 9279/96

Title I - the grant of patents and the license of contracts for exploitation,

Title II - the grant of industrial designs and the license of contracts for exploitation,

Title III – the grant of trademarks registration and the license of contracts for use,

Title V – crimes against industrial property and unfair competition,

Title VI – the recordal of transfer of technology and franchising contracts.

• To promote the use of the Intectual Property System as a tool for capacity building and competitiveness, stimulating innovation in order to increase the Brazilian technological, economic and social development








INPI’S MISSION

Patents Directorate

(DIRPA)

Trademark Directorate

(DIRMA)

Directorate of Cooperation

for Development

(DICOD)

Directorate of Contracts,

Geographical Indications

and Other Registers

(DICIG)

General Coordination of

Geographical Indications and

Registers (CGIR)


Technology Contracts

(CGTEC)

National Institute of Industrial Property (INPI)

Mandate (Decree No. 7356, November 12, 2010)

Endorse license agreements of intellectual property rights and register contracts

involving technology transfer, technical services and franchising, according to Law

9279, 1996;

Offer orientation to micro, small and medium enterprises, science and technology

institutions and government agencies on best practices for the licensing of industrial

property rights and other forms of technology transfer, including compulsory licenses;

Cooperate with the activities of INPI and other institutions to promote participation

of Brazilians in the Intellectual Property Rights System.

Patents Directorate

(DIRPA)

Trademark Directorate

(DIRMA)

Directorate of Cooperation

for Development

(DICOD)

Directorate of Contracts,

Geographical Indications

and Other Registers

(DICIG)


Geographical Indications and

Registers (CGIR)


Technology Contracts

(CGTEC)

National Institute of Industrial Property (INPI)

Coordination of technical

orientation (COTEC)

Division of registration

contracts (DIREC)

Division of License

Endorsement (DIALI)

Administrative support

services (SACOT)

Formal requirements for

contracts and administrative

supporting services

Contracts of industrial

property rights and

franchising

Contracts of know-how and

technical assistance services

Training, advice and supply

of information

Legislation and effects of the recordal of the agreement at the INPI








• Legal effects of recordal of contracts in INPI

– validity of the contract to third parties

Articles 62, 121, 140 and 211 of Law 9279/96

– deduction of expenses for the contractor

Decree 3000/99 - Ministry of Finance

– recognize payments abroad in the category of royalties and technical assistance

Article 9 of Law No. 4.131/62

Resolution 3844/10 of the Central Bank of Brazil

The role of the INPi in the contracts ogf intangible assetsl







Contracts related to intellectual property in Brazil








• Technology commerce (buying and selling of intangibles)

– Industrial Property Rights

– Knowledge not protected by Industrial Property Rights and other intangible assets








Main contractual scope

• Intellectual Property Rights (IPR´s) in Brazil

– Trademarks, patents, industrial designs*

protected by the Industrial Property Law

• Knowledge and intangible assets not protected by Intellectual Property Rights (IPR´s) in Brazil

– Know-how, trade secrets, technical assistance and technical solutions not disseminated in the Brazilian market

protection against crimes of unfair competition


Legislation and effects of recordal





Procedures for registration of contracts in INPI * rights granted by the INPI

Types of contracts covered by the Brazilian Legislation








* Industrial Property Law, 9279/96 and Normative Instruction 16/2013

LICENSING OF INDUSTRIAL PROPERTY RIGHTS *

EP PATENT EXPLOITATION

DI INDUSTRIAL DESIGN EXPLOITATION

UM USE OF TRADEMARK

SUPPLY OF TECHNOLOGY CONTRACTS*

FT KNOW-HOW AND TRADE SECRETS

SAT CONTRACTS FOR THE PROVISION OF

SCIENTIFIC AND TECHNICAL ASSISTANCE

FRA FRANCHISING (Law 8955/94)








Requirements for contracts involving non-residents in

Brazil








• Convalidation contract in Brazil

– consular legalization and notarization

Brazilian Business Law

• recording contract by INPI

– requirement to make payments abroad

regulations of Central Bank of Brazil

• Companies with majority control of capital and subsidiaries of multinational companies (MNC's)

– payments for royalties and technical assistance limited to the percentage of tax deduction (maximum of 5% on the net sales price)

Income Tax Regulations






Requirements for contracts involving non-residents in Brazil


• Principal Clauses of a Contract*

– Object of the Contract

– Remuneration or royalties

– Term of the Contract






Requirements for contracts involving non-residents in Brazil


* Normative Instruction 16/2013

Procedures for registration of contracts at INPI








application Certification Formal

examination

Technical

examination

technical

demand

Formal

demand

Archiving of

application Answer the

formal demand Answer the

technical demand

Rejection

submission of documents by any of the contractual parties to INPI

electronic submissions from 2013

Application Certification Formal

examination

Technical

examination

Technical

demand

Formal

demand

Archiving of



technical demand

Rejection

analysis of the formal requirements of the documents

decision time: 4 days (maximum)


examination

Technical

examination

Technical

demand

Formal

demand

Archiving of



technical demand

Rejection

time to answer: 60 days


examination

Technical

examination

Technical

demand

Formal

demand

Archiving of



technical demand

Rejection

analysis of contract terms based under de law

time to answer: 30 days (maximum)


examination

Technical

examination

Technical

demand

Formal

demand

Archiving of



technical demand

Rejection

time to answer: 60 days


examination

Technical

examination

Technical

demand

Formal

demand

Archiving of



technical demand

Rejection

legal effects of recordal from the publication in the Journal of Industrial Property INPI (RPI)

“Recordal of Agreements at the INPI: update and necessary requirements for a fast procedure”

Lia de Medeiros

[email protected]

Thank you for your attention!

“Recordal of Agreements at the INPI: update and necessary...

Documents

Transcript of “Recordal of Agreements at the INPI: update and necessary...