INPI simplifies the recording and registration of technology transfer agreements

Monday, February 27th, 2023

The Brazilian Patent and Trademark Office (INPI, in Portuguese) published the minutes of meeting changing that amend the criteria for analysis of technology transfer agreements

Following the debates initiated at the joint seminar, organized by the Licensing Executive Society (LES) and the Brazilian International Chamber of Commerce (ICC-Brazil), the Brazilian Patent and Trademark Office (INPI) sought to simplify the process of recording and registration of technology transfer agreements, softening the admissibility criteria that were being applied based on the INPI/PR Resolution No. 199 of July 7, 2017.

Through the minutes of meeting of December 28, 2022 (SEI/INPI no. 0747049), the following measures were implemented:

I. End of the requirement of e-apostille or consular legalization for digitally signed documents. The INPI will also accept digital signatures outside the certifications issued by ICP-Brasil.

II. There is no longer need to put the initials on all pages of the contract by the signatories, as well as the end of the mandatory signature of two witnesses in the case of contracts signed in Brazil. 

III. There is no longer need to present by-laws, corporate contracts, articles of incorporation and last amendment of the corporate purpose and consolidated legal representation of the Brazilian company in the registration form.

In addition to the measures indicated above, the minutes of meeting also formalized the possibility of registering licenses of non-patented technology (know-how) agreements, modifying an understanding of the INPI that only duly registered technologies (i.e. patents and industrial designs) could be subject to license. Historically, the INPI only accepted to register know-how agreements under a definitive transfer of rights structure.

Finally, the INPI decided not to issue office actions on registration processes with agreements providing for the payment of royalties for the license of trademark applications. The Institute also sent an internal consultation to evaluate the possibility of adopting the same understanding for patent and industrial design applications. In this sense, INPI was used to record agreements covering trademarks and patents applications; however, the agency refused to approve payments while those applications have not matured into registrations.

NNB Advogados has a team specialized in industrial property and technology transfer agreements, qualified to assist companies in consultative and litigious demands. To learn more about how we can help you, please contact us.