Table of Contents
Patents of Invention
Legal Basis
– Law No. 9.279 of May 14, 1996 (Industrial Property Law).
– Patent Office Regulations and Examination Guidelines in the form of Normative Instructions No. 118/2020, Ordinance Nos. 411/2020, 10/2024, 14/2024 and 16/2024 and Resolutions Nos. 93/2013, 144/2015, 169/2016, 208/2017, 405/2020 (prosecution, examination, procedures, formalities, amendments and divisional), 85/2013 (examination guideline for utility models) among other PTO’s regulations.
Membership in International Conventions
– Paris Convention.
– Patent Cooperation Treaty (PCT).
Filing Requirements
– Power of attorney including powers to receive judicial summons (no legalization); may be filed within sixty days from date of application;
– Specification in Portuguese; the application can be filed in a foreign language, but a translation into Portuguese must be submitted later (it is advisable to file it within the subsequent thirty days to avoid an Office action);
– Drawings; the drawings shall not be framed or contoured by lines and shall be made on smooth white paper DIN A4, with the following minimum blank margins: upper margin: 4 cm, left margin: 3 cm, right margin: 1.5 cm, lower margin: 1 cm;
– Certified copy of the complete basic application (priority document) may be filed within 180 days from the filing date, accompanied by a simple translation of the filing certificate or like document that contains suitable information to identify the document;
– Name, nationality, profession, and complete address of the applicant and the inventor.
Remarks
National Phase of PCT: under Chapter I: 30 months; under Chapter II: 30 months.
Duration: patent issued after formal and substantive examination – valid for 20 years.
Annuities: applicants and patentees are subject to the payment of annual fees, as from the beginning of the third year from the date of filing. The payment should be effected within the first three months of each annual period, but may still be effected within the following six months, independently of notification, by payment of an additional fee.
Administrative nullification procedure: within six months from grant of a patent, an administrative nullification procedure may be instituted within INPI, ex officio, or on request of any person having legitimate interest.
Nullification actions can be filed at any time during the term of a patent by INPI or by a legitimate party and the Judge may, as a preventive or incidental measure, determine the suspension of the effects of a patent.
Trade and Service Marks
Legal Basis
– Law No. 9.279, in force as from May 15, 1996.
– Patent Office Regulations in the form of Ordinances and Normative Acts.
Membership in International Conventions
– Paris Convention.
– Madrid Protocol.
Filing Requirements
– Power of attorney including powers to receive judicial summons (no legalization); may be filed within sixty days from date of application;
– Priority certificate, certified by the Patent Office of the country of origin, but not legalized, whenever a Convention priority is claimed; may be filed within four months from filing date of application;
– In case of design marks, 7 prints (size: 6 x 6 cm or 8 x 8 cm in case of e-filing).
Remarks
Duration – renewals: 10 years from the filing date; renewable for further periods of 10 years.
Obligation to use the registered mark: forfeiture may be declared upon a request of a third party if the use of the registered mark has not been commenced within five years from grant of registration, or is interrupted for over five consecutive years or if, within that time, the mark has been used in modified form that implies alteration in its original distinctive character, as found on the certificate of registration. The registration will not be subject to forfeiture if the registrant justifies the lack of use for legitimate reasons. Use of the mark must include products or services mentioned on the certificate, under penalty of partial forfeiture of the registration with respect to those products or services not similar or akin to those for which use of the mark has been proved.
Opposition: once approved as having met formal requirements, the application will be published for oppositions within a period of sixty days and then, submitted to a technical examination.
Industrial Designs
Legal Basis
– Law No. 9.279 of May 14, 1996 (Industrial Property Law).
– Patent Office Regulations in the form of Resolution No. PR 36/2023.
Membership in International Conventions
– Paris Convention.
– Hague Agreement, Geneva Act.
Filing Requirements
– Power of attorney including powers to receive judicial summons (no legalization required) must be filed within sixty days from date of application;
– Specification in Portuguese (optional), consisting of a brief description of the drawings and an indication of the field of application of the claimed matter;
– Claim (optional), consisting of the title of the design followed by the expression “characterized by having its appearance defined in accordance with the attached set of figures”;
– Drawings: images of the claimed matter may be represented by means of figures or photographs, provided that, in both cases, they should permit a clear visualization of the product or object intended to be protected, so that it can be reproduced with basis on such images;
– Certified copy of the priority document (if any) should be filed within ninety days from the filing date, accompanied by a simple translation of the filing certificate or like document that contains suitable information to identify the document;
– Name, nationality, profession, and complete address both of the applicant and of the author.
Remarks
Duration: after formal examination: 10 years from the filing date. Renewable for three successive periods of 5 years each.
Administrative nullification procedure: may be instituted ex officio, or at request of any person having a legitimate interest within five years from the grant of registration.
Nullification actions can be filed at any time during the term of an industrial design by INPI or by a legitimate party and the Judge may, as a preventive or incidental measure, determine the suspension of the effects of a design.
Domain Names
Filing
ccTLD: .br
Applicant: individuals and legal entities.
Local presence: required.
Remarks
Duration – renewals: minimum one year/maximum ten years, renewable.
Uniform dispute resolution procedure: available (UDRP-like proceedings before WIPO Arbitration and Mediation Center, the Brazilian Industrial Property Association, or the Brazil-Canada Chamber of Commerce).