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March 16, 2017

Newsletter - Unilateral change by the Brazilian Patent and Trademark office (BPTO) in technology transfer agreement is authorized by the Brazilian Superior Court of Justice (STJ)

In a recent STJ judgment, the court ruled to legitimize changes made by the BPTO to a technology transfer agreement. In the specific case, the BPTO transformed an onerous contract into one free of charge.

STJ's position on the BPTO's authority is widely challenged by legal doctrine and literature, especially based on the principle of the legality of public administration acts, which, strictly speaking, depend on explicit legal provisions.

In the current case, the contracting parties filed a writ of mandamus against the BPTO’s act, claiming that with the advent of Law No. 9.279/96 (Brazilian Industrial Property Law - LPI), the Office’s jurisdiction would have been modified and it would no longer have powers to unilaterally alter agreements between private parties.

In the judgment, the reporting judge of the case stated that, despite the change in the law, "giving a restrictive interpretation to such legal principle would imply in total disregard of the implicit existence of powers". In addition, the court indicated that the BPTO would be acting as a delegated agent of the tax authority for the purpose of suppressing abusive clauses involving remittances of royalties abroad.
 

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