On December 30, 2022, the National Institute of Industrial Property (INPI) took a significant step towards modernizing the procedures for registering licensing contracts in Brazil. The Board meeting minutes from December 28, 2022, brought about significant changes to the Brazilian practice of intellectual property, with the primary aim of streamlining formalities and expediting contract registration.
Among the proposed measures, the Institute sought to simplify the formalities for registration procedures, including digital signatures, and reducing the requirements for witnesses in contract registration. Additionally, the new regulations address changes related to corporate documents required in the procedures and royalty payments and their contractual limits. Non-Patented Technology License Agreements and Know-How Licenses are now accepted for registration with the INPI.
READ MORE: For a detailed view of the main approved changes by the INPI, access the Legal Alert prepared by L.O. Baptista’s Intellectual Property department by clicking here.
Despite the immediate applicability of the proposed changes since the end of January 2023, the INPI noticed certain difficulties experienced by IP users in understanding the regulatory nature of the decision adopted by the Institute, aimed at replacing excessively bureaucratic requirements that were previously in force. For this reason, on June 21, 2023, the Institute scheduled a joint meeting with the members of the INPI Task Force of the International Chamber of Commerce (ICC Brazil) to draft a report containing the main points for implementing the measures.
On July 7, 2023, Regulations No. 26 and 27 were published by the Institute, confirming the regulatory nature of the provisions already contained in the aforementioned minutes. See below the main features of each instrument:
- Portaria INPI nº 26: establishes the administrative procedure for registering licenses and transfers of industrial property rights and the registration of technology transfer and franchise contracts.
- Portaria INPI nº 27: presents examination guidelines for registering or recording contracts for licensing industrial property rights and the registration of integrated circuit topography, technology transfer, and franchise related contracts.
Companies and interested parties can now access the new streamlined procedures for contracts involving technologies such as trademark and patent licenses, transfer and assignment of industrial property rights, technology transfer, and franchises. The INPI also took the opportunity to update the examination guidelines for registration of intellectual property contracts.
The Intellectual Property team at LO.Baptista is available to provide you with clarifications and guidance on the subject.
Coauthors: Ana Carolina Gontijo and Carolina Britski Puga
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