On July 11, 2023, the National Institute of Industrial Property (INPI) published the Ordinances/INPI/PR No. 26 and 27/2023, both dated July 7, 2023 (“Ordinances”), which amend certain formal and technical rules regarding the registration of technology agreements. These Ordinances formalize the amendments approved at INPI’s Board Meeting dated 28 December 2022.
From a formal perspective, the main changes in the process of registration of the technology transfer agreements are:
(i) Acceptance of Digital Signatures without the use of ICP-Brasil Certificates: In addition to digital signatures using ICP-Brasil certificates, which were already accepted, INPI will also accept digital signatures using other means of proving the authorship and integrity of electronic documents, pursuant to article 10 of Provisional Measure No. 2200-2/2001;
(ii) Waiver of E-Notarization and E-Apostile in cases of documents digitally signed abroad: For documents digitally signed abroad, INPI will waive, from now on, the need of E-Notarization and E-Apostile.
(iii) Exemption from the signature of two witnesses in contracts executed in Brazil: INPI will no longer require contracts that have a Brazilian city as the place of signature to be signed by two witnesses;
(iv) Exemption of initials in all pages: INPI will no longer require all pages of contracts to be initialed by the parties;
(v) Exemption of submission of bylaws, articles of association, or articles of incorporation of the legal entity, and the last consolidated amendment of such documents, in case of companies domiciled or resident in Brazil: Such documents, which were previously required, will no longer appear as mandatory documents for registration purposes;
(vi) Presentation of the Registration Form: The Registration Form, which was required for Brazilian companies and which needed to be renewed every 02 years or whenever the company’s registration information changed, will no longer be required by INPI for purposes of registrations.
From a technical point of view, the main change brought t by the Ordinances is the possibility of registering agreements having as object the licensing of non-patented technology (Know-How). Until the issuance of the new Ordinances, the INPI provided that only the transfer of Know-How (and not its´ licensing), was allowed (i.e., as soon as the Know-How was transferred, it would become the property of the receiving party, and there could be no provision in the contract for the receiving party to cease using the Know-How after the expiration or termination of the contract).
The Ordinances revoke INPI/PR Resolution No. 199, dated July 7, 2017 and Normative Instructions No. 16, dated May 18, 2013, No. 39, dated June 22, 2015, and No. 70, dated April 11, 2017. The Ordinances entered into force on the date of their publication.
Co-authors: Amanda Brisolla Fernandes, Daniela Zaitz and Gabriel Grunberg Tesler
