In July, the Brazilian Patent and Trademark Office (BPTO) issued two ordinances amending the procedures for examining and registering industrial property (IP) licensing and transfer agreements, integrated circuit topography registrations, technology transfers and franchises.
The changes were discussed at a board meeting held on December 28, 2022. On the same occasion, other measures were also discussed to simplify procedures and ensure greater speed in processes conducted by the agency.
INPI/PR Ordinance 26/23 sets out the procedure for registration of licenses and transfers of industrial property rights, registration of technology transfer agreements and franchising. INPI/PR Ordinance 27/23 covers the guidelines for examining these contracts and revokes INPI/PR Resolution 199/17, which previously regulated this matter.
The main changes are the possibility of:
- registration of a know-how license agreement; and
- remittance of royalties from industrial property transfer or licensing agreements with a pending registration application (that is, still under analysis by the INPI).
Registration of know-how license agreements
The INPI did not allow the registration of unregistered technology license agreements (know-how). To allow registration, the authority defined these contracts as follows:
|ORDINANCE INPI/PR 26, OF JULY 7, 2023||ORDINANCE/INPI/PR 27, OF JULY 7, 2023|
Art. 2 The INPI shall register license, sublicense and transfer agreements for industrial property rights and shall register the following technology transfer and franchise agreements.
III. Transfer of technology:
a) The contract for the supply of technology (know-how) which comprises the permanent acquisition or temporary licensing of knowledge and techniques not covered by industrial property rights or the supply of technological information, intended for the production of goods and services;
Art. 8 The contractual modalities registered as acquisition of knowledge at the INPI involve the supply of technology and technical and scientific assistance services.
I. The technology supply contract comprises the permanent acquisition or temporary licensing of knowledge and techniques not covered by industrial property rights or the supply of technological information, intended for the production of goods and services. These contracts must contain an indication of the products.
Therefor there now is an express provision guaranteeing the registration of know-how licensing agreements by the INPI.
Remittance of royalties for licensing industrial property applications
With the aforementioned ordinances, the INPI has made it possible to register and collect royalties on international licensing or transfer agreements, the object of which is the application for registration of industrial property rights (trademarks, patents, industrial designs and integrated circuit topography). Previously, this was only possible if the rights were duly registered. This is another major change, which brings local and international practices more into line.
The measures adopted by the INPI were long overdue and should ensure greater agility and ease in the international contracting of industrial property rights and the transfer of know-how.