“Recordal of Agreements at the INPI: update and necessary...
Transcript of “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.
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
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
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
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)
General Coordination of
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)
General Coordination of
Geographical Indications and
Registers (CGIR)
General Coordination of
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
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
• 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
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
Contracts related to intellectual property in Brazil
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
• Technology commerce (buying and selling of intangibles)
– Industrial Property Rights
– Knowledge not protected by Industrial Property Rights and other 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
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
The role of the INPI in the contracts of intangible assets
Legislation and effects of 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 * rights granted by the INPI
Types of contracts covered by the Brazilian Legislation
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
* 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)
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
Requirements for contracts involving non-residents in
Brazil
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
• 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
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-residents in Brazil
Procedures for registration of contracts in INPI
• Principal Clauses of a Contract*
– Object of the Contract
– Remuneration or royalties
– Term of the Contract
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-residents in Brazil
Procedures for registration of contracts in INPI
* Normative Instruction 16/2013
Procedures for registration of contracts at INPI
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
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
application Answer the
formal demand Answer the
technical demand
Rejection
analysis of the formal requirements of the documents
decision time: 4 days (maximum)
Application Certification Formal
examination
Technical
examination
Technical
demand
Formal
demand
Archiving of
application Answer the
formal demand Answer the
technical demand
Rejection
time to answer: 60 days
Application Certification Formal
examination
Technical
examination
Technical
demand
Formal
demand
Archiving of
application Answer the
formal demand Answer the
technical demand
Rejection
analysis of contract terms based under de law
time to answer: 30 days (maximum)
Application Certification Formal
examination
Technical
examination
Technical
demand
Formal
demand
Archiving of
application Answer the
formal demand Answer the
technical demand
Rejection
time to answer: 60 days
Application Certification Formal
examination
Technical
examination
Technical
demand
Formal
demand
Archiving of
application Answer the
formal demand Answer the
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
Thank you for your attention!