News | BRPTO publishes Ordinances related to technology transfers and other agreements
On July 11, 2023, the Brazilian Patent and Trademark Office (BRPTO) published Ordinances No. 26/2023 and 27/2023.
Ordinance No. 26/2023 provides the administrative procedure for the recordal of licenses and assignment deeds of industrial property rights and registration of technology transfer and franchise agreements. Ordinance No. 27/2023 provides the guidelines of the examination for the recordal of licenses of industrial property rights and registration of integrated circuit topography, technology transfer and franchise.
Among several important matters of the new Ordinances, we highlight the following:
ORDINANCE NO. 26/2023
Article 2 establishes that the BRPTO will register the license, sublicense and assignment of industrial property rights agreements and will register the following technology transfer and franchise agreements:
I. Industrial property right license;
II. Assignment of industrial property rights;
III. Technology transfer.
The Ordinance defined that technology export contracts are exempt from recordal or registration before the BRPTO.
It is established, by art. 11, that the term of the industrial property rights license agreement may not exceed the term of these rights in Brazil.
ORDINANCE NO. 27/2023
Article 3 (Annex I) establishes that the technical examination will analyze the following aspects:
I. The object and conditions of agreements for the supply of technology and technical and scientific assistance services, regarding the classification as technology transfer pursuant to Article 211 of Law No. 9,279 of 1996;
II. The analysis of the situation of applications for industrial property rights and the validity of industrial property rights that are the subject of license and sublicense agreements for industrial property rights and integrated circuit topography and franchise agreements for the issuance of the Certificate of Recordal or the Certificate of Registration;
III. The term of the contract for the assignment, license, and sublicense of industrial property rights and integrated circuit topography limited to its term at the BRPTO for the issuance of the Certificate of Recordal;
IV. The nature of the exclusive or non-exclusive license or sublicense object of the license or sublicense agreement of the right(s) and application(s) of industrial property and registration(s) and application(s) of integrated circuit topography for the issuance of the Certificate of Registration;
V. The purpose of the franchise agreement regarding the requirement of Article 2 of Law No. 13,966, of 2019 and article 211, of Law No. 9,279, of 1996.
- Contractual Modalities in the Certificate
Article 4 (Annex I) establishes that the modalities endorsed as licensing or sublicensing agreements at the BRPTO involve trademarks, patents and industrial designs, and integrated circuit topography.
Item I, of art.5 (Annex I), defines that the compulsory license comprises a temporary suspension of the exclusivity right of the owner of a patent or patent application, allowing the production, use, sale, or importation of the product or process based on the granted patent and/or application for a patent filed before the BRPTO subject to a compulsory patent license.
By art. 8 (Annex I), it is established that the contractual modalities registered as acquisition of knowledge at the BRPTO involve the provision of technology and technical and scientific assistance services. Article 9 establishes that the contractual modalities registered as a business franchise before the BRPTO involve adherence to the franchise system and the master franchise and subfranchise systems.
- Declared Value of the Agreement in the Certificate
Article 14 (Annex I) defines that, in licensing agreements for industrial property rights and integrated circuit topography, technology transfer and franchise, the Declared Value of the Agreement field in the Annotation or Registration Certificate will be the declared value of the contract, observing the provisions of items I – V of the article.
- Validity Period and Protocol Date in the Certificate
Art. 16 (Annex I) provides that the period of validity of the industrial property rights granted by the BRPTO will be the period established in the BRPTO database. Art. 17 (Annex I) defines that the protocol date in the Certificate of Recordal or Certificate of Registration will be the date of submission of the application for recordal or registration of the agreement before the BRPTO.
According to art. 19, the decision of the BRPTO regarding the examination of the application for recordal or registration may be:
I. Issuance of Certificate of Registration or Certificate of Recordal;
II. Formulation of a formal and/or technical office action when at least one of the items of the general conditions of admissibility of the contract and/or the technical examination are not met;
III. Rejection of the application for recordal/registration;
IV. Filing of the application for annotation or registration.
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Both Ordinances came into force from their publication date. To check the complete Ordinances (in Portuguese), please access https://www.simoes-ip.com/en/wp-content/uploads/sites/2/2023/07/Comunicados2740.pdf