Article | New rules on the recordal of contracts at the INPI

Upon analyzing some issues raised by the Licensing Executive Society (LES) Brazil and the International Chamber of Commerce – ICC-Brasil, the INPI established new rules on the recordal of technology contracts. In sum, the main changes are:

Removal of mandatory notarization and apostille/legalization of foreign signatures and Acceptance of digital signatures without ICP-Brasil certificate, also eliminating the need for e-notarization and e-apostille. It was decided that, in situations involving the use of a digital signature (ICP-Brasil certificate or the like), the consular apostille/legalization will no longer be required. In other cases, the need for consular apostille/legalization remains.

Electronic petitions referring to all acts performed by the applicant for registration or annotation should contain a specific field in which his attorney-in-fact declare to be responsible for the veracity of both the information provided and the documents attached. While the change in the forms is not carried out yet, a statement from the applicant’s attorney will be required, attached to the petition to be filed with the INPI, in which he attests to the veracity of the information and documents presented, under the penalties of the law. Good faith will be presumed in all acts performed before the INPI.

Removal of the obligation to insert two witnesses when the contract provides for a Brazilian city as the place of signature. The Brazilian legal system does not impose the obligation of signature by two witnesses in private contracts. Article 784, item III, of the CPC, does not apply to the situation under discussion, being applicable only to extrajudicial enforceable titles. The inclusion of two witnesses in private contracts is something provided to the parties, not mandatory.

Removal of the need to present the bylaws, articles of incorporation or articles of incorporation of the legal entity and the last amendment on the consolidated corporate purpose and legal representation of the legal entity of the assignee, franchisee or licensee, domiciled or resident in Brazil. The upload of such documents is no longer a necessary step for the finalization of all stages of the electronic protocol of petitions.

Acceptance of Unpatented Technology Licensing – also known as know-how licensing. OPINION No. 00031/2021/CGPI/PFE-INPI/PGF/AGU, of the Specialized Federal Attorney of the autarchy (Process 52402.010009/2020-51), admits the possibility of licensing non-patented technology. This is an atypical contract, approved by art. 425 of the CC and that meets the conditions and requirements set forth in art. 104 of the same legal diploma.

With the adoption of this type of licensing by the INPI, institutional, legal and safe business environments are created, capable of stimulating the growth of the number of contracts of this nature signed between national and foreign companies that hold technology, expanding commercialization opportunities industrial and intellectual property rights and leverage the innovation process in the country.

The Board decided that royalty payments on contracts that have as their object requests for patents, industrial designs and trademarks are established by interparty agreements and will not be obstructed by the INPI. It is up to the Institute, with the legal support of its Specialized Federal Attorney, to analyze the legal nature of the industrial property assets, object of the contracts, so that their remuneration effects are examined and justified by the contracting parties before the competent entities of the Public Administration, but not obstacles will be created to its registration that may make unfeasible payments agreed between the contracting parties.

The Specialized Federal Prosecutor’s Office of the INPI recognized that, in the annotations of license agreements for applications and trademark registrations, requests for trademark registrations, as intangible assets with patrimonial value, are subject to legal protection in the form of articles 130 and 195, item III of Law No. 9,279/96. The application for registration of a trademark is of a legal nature, subject to a resolutive condition (Articles 127 and 130 of the Civil Code), integrating the property of its owner, who is entitled to enter into a use licensing agreement. Thus, the date to be considered as the initial term for the item “Term of Effectiveness Declared in the Contract”, contained in the certificate issued by the INPI, must be the one declared in the contract itself submitted for registration with the Autarchy.

The Public Prosecutor’s Office understood that the private individual, when filing an application for registration of a trademark with the INPI, incorporates the ownership of the application into his/her assets. The legal effects provided for in article 130 of the Law are produced immediately. The application will only cease to be part of your equity if it is archived by the INPI. The resolutive condition, therefore, is the filing of the application for registration by the INPI. Since the request was approved and the registration was subsequently granted, the integration into the estate obviously remains.

This conclusion has already been the object of a legal position regarding trademark applications. It was decided that, in the short term, a consultation would be forwarded to the Attorney General’s Office on the possibility of extending this understanding to patents, industrial designs and other IP assets, where applicable.

The INPI also considers that it is not its responsibility to determine payment limits between companies, that is, remittance of royalties abroad.

The current position of INPI’s Governing Body shows that current practices must meet the requirements of economic, scientific, and technological development and promote innovation in the country, as well as preserve the contractual autonomy of the parties and their perception of risk in their private businesses, serving the public interest and the national legal system.