9 January 2023

New Rules For The Registration And Annotation Of Contracts With The BPTO

Removal of mandatory notarization and apostille/legalization of foreign signatures and acceptance of digital signatures without ICP-Brasil certificate.
Brazil Intellectual Property
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The Brazilian PTO (BPTO) published on December 30, 2022 the minutes of the meeting (SEI INPI 0747049), held on December 28, 2022, during which the Board of Directors and other representative members of the office determined some important changes to simplify the registration and annotation rules of IP contracts with the BPTO.

As mentioned by the BPTO, said meeting and decisions were motivated following recent debates with the Licensing Executive Society (LES) Brazil and the International Chamber of Commerce (ICC-Brazil), as well as the subsequent proposals submitted by both associations aiming at improving the process of annotation and registration of contracts.

The main decisions related to the requirements for registering and annotating contracts with the BPTO, which shall be implemented immediately, are the following:

  • Removal of mandatory notarization and apostille/legalization of foreign signatures and acceptance of digital signatures without ICP-Brasil certificate. The BPTO also waived the need for e-notarization and e-apostille;
  • Elimination of mandatory initials on all pages of an agreement;
  • Removal of the obligation to have a contract signed by two witnesses when the contract provides for a Brazilian city as the place of signature; and
  • Removal of the need to present the Statute of Incorporation, Articles of Association or any other constitutive act of the legal entity and the last amendment to the consolidated corporate purpose of a company, as well as the legal representation of the assignee, franchisee or licensee, domiciled or resident in Brazil.

Additionally, it is worth mentioning that from now onwards the BPTO will accept license agreements of non-patented technology, i.e., know-how license agreements. As highlighted by the BPTO, such decision is in line with the best international practices and policies such as the ones to encourage technological innovation in OECD countries.

At last, it is also important to note the BPTO´s decision on the impossibility of paying royalties for pending patent, design and trademark applications. In this regard, the Board of Directors decided that royalty payments in contracts whose object is a pending patent, design and trademark application are established by agreements between parties and will not be obstructed by the BPTO. In such cases, the BPTO with the legal support of its Specialized Federal Attorney, will analyze the legal nature of the concerned IP asset, object of the contract, so that the remuneration effects of the contract are examined and justified by the parties before the competent authorities of the Public Administration. However, no obstacles will be created to the registration of such agreement that could interfere in the feasibility of royalty payments agreed between the contracting parties.

These are positive changes that will certainly contribute to develop new opportunities for IP commercialization and to promote economic, scientific, and technological development with innovation in the country.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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