On July 11th, the Brazilian Patent and Trademarks Office (BPTO) published new regulations on the registration of technology agreements: Ordinances Nos. 26 and 27 of 2023. They make the formal and technical aspects of the registration process more flexible by incorporating the rules discussed by the BPTO's Board of Directors at the end of last year. Moreover, the main purpose of the new rules is to simplify the process for registering technology agreements by adapting it to the demands of the technology market.
After the Minutes of the Meeting convened by the presidency in December 2022 were published, the BPTO stated that the deliberations from this meeting would still need to be incorporated into the BPTO rules and the petitioning system itself.
Thus, with the publication of these ordinances, we will certainly have more security in relation to the application of the new BPTO guidelines for the registration of agreements:
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Ordinance No. 26/2023: establishes the administrative procedure for registering licensing and assignment of industrial property rights, technology transfer and franchise agreements.
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Ordinance No. 27/2023: implements new examination guidelines for registering the technology agreements mentioned above.
These ordinances revoke BPTO’s prior rules for registration of technology agreements - Normative Instructions No. 16/2013, No. 39/2015 and No. 70/2017 and INPI/PR Resolution No. 199/2017.
The main modifications brought by these Ordinances for the registration procedure are:
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Digital signatures: in cases involving digital signatures by foreign parties, notarization and apostille/legalization are no longer required and digital signatures that do not meet the ICP-Brazil (Brazilian Public Key Infrastructure -PKI) standard are now admitted.
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Initials: initialing is no longer required on all pages of the agreements and their exhibits.
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Signature by witnesses: the signature of two witnesses is no longer required.
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Corporate documents of the Requesting Party: the presentation of the corporate documents of the assignee, franchisee, or licensee, located or based in Brazil (e.g., bylaws, articles of incorporation, etc.) and the Registration Form are no longer required.
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Licensing of non-patentable technology: the adoption of the non-patented technology licensing modality (know-how licensing) is recognized, according to the best international practices.
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Payment of royalties for patent, industrial design, and trademark applications: the payment of royalties under agreements concerning patent, industrial design and trademark applications will not be hindered, provided that these applications are filed before the BPTO. Thus, the BPTO recognizes that these assets, even if still pending applications, are subject to legal protection and have proprietary value.
With the publication of Ordinances No. 26 and 27 of 2023, which came into force on their publication date, the processes for registering and recording technology agreements become less bureaucratic, more straightforward, and faster – essential characteristics for business involving technologies protected by intellectual property.
The new rules are beneficial not only for registering new agreements, but also for fulfilling office actions and renewing agreements previously registered with the BPTO and their respective registration certificates.
The new regulations, as well as the position that the BPTO has been adopting in recent years, certainly reflect on the development and research of new products and technology, boosting innovation and the economy. The initiative meets the demand of the technology market, including attracting foreign investment to the country by streamlining the process for registering technology agreements.
