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INTELLECTUAL PROPERTY RIGHTS
NATIONAL LEGISLATION - BRAZIL
Industrial Property Law - Law Nš 9.279, of May 14, 1996
Section II: Administrative Procedure for Nullity
Article 50 - Administrative nullity of a patent shall be declared if:
Article 51 - Proceedings for nullity may be instituted ex officio or at the request of any person having a legitimate interest, within 6 (six) months as from the grant of the patent.
Sole Paragraph - Proceedings for nullity shall continue even if the patent has lapsed.
Article 52 - The patent owner shall be invited to make his comments within a period of 60 (sixty) days.
Article 53 - Irrespective of the filing of comments by patent owner, once the period provided for in the preceding Article has expired, INPI shall issue an opinion and shall invite the patent owner and the applicant to submit comments within a common period 60 (sixty) days.
Article 54 - After the period set forth in the previous article has expired, even if no comments have been received, the matter shall be decided by the President of INPI, and the administrative procedure shall be concluded.
Article 55 - The provisions of this Section shall apply, mutatis mutandis, to certificates of addition.
Section III: Proceedings for Nullity
Article 56 - Proceedings for nullity may be instituted at any time during the term of a patent by INPI or by any party having a legitimate interest.
Paragraph 1 - Nullity of a patent may be adduced at any time as a plea of defense.
Paragraph 2 - As a preventive or incidental measure, the court may decide to suspend the effects of the patent, provided that the relevant procedural requirements are met.
Article 57 - The proceedings for nullity shall be tried by the Federal Courts and INPI, where INPI is not the plaintiff, shall participate in the proceedings.
Paragraph 1 - The defendant shall be given 60 (sixty) days to submit his comments.
Paragraph 2 - Once the decision on nullity proceedings has been made final, INPI shall publish a notification to inform third parties.
CHAPTER VII: ASSIGNMENT AND ENTRIES
Article 58 - A patent application or a patent, the contents of which are indivisible, may be assigned in whole or in part.
Article 59 - INPI shall make the following entries:
Article 60 - With regard to third parties, entries shall have effect as from the date of publication.
CHAPTER VIII: LICENSES
Section I: Voluntary Licenses
Article 61 - A patent owner or applicant may execute a licensing contract for exploitation.
Sole Paragraph - The patent owner may afford on the licensee full powers to act in the defense of the patent.
Article 62 - To produce effects regarding third parties a licensing contact must be recorded with INPI.
Paragraph 1 - The recording shall have effect with regard to third parties as from the date of its publication.
Paragraph 2 - For the purposes of proving use, a licensing contract shall not need to be recorded with INPI.
Article 63 - An improvement made to a licensed patent shall belong to the person who has made the improvement and the contracting party shall be afforded a preferential right to a license.
Section II: Offer to License
Article 64 - A patent owner may request from INPI to put up his patent for offer with a view to its exploitation.
Paragraph 1 - INPI shall publish the offer.
Paragraph 2 - No exclusive voluntary license shall be recorded at INPI unless the patent owner has withdrawn his offer.
Paragraph 3 - No patent under an exclusive voluntary license may be put up for offer.
Paragraph 4 - The patent owner may withdraw his offer at any time, prior to the express acceptance of the terms of the offer by an interested party, whereby the provisions of Article 66 shall not apply.
Article 65 - If the patent owner and the licensee fail to reach an agreement, they may request INPI to arbitrate on the remuneration.
Paragraph 1 - For the purposes of this article, INPI shall comply with provisions of article 73 paragraph 4.
Paragraph 2 - The remuneration may be reviewed 1 (one) year after it has been determined.
Article 66 - The renewal fees for a patent subject to offer shall be reduced by one-half during the period between the offer having been made and the grant of the first license of any type.
Article 67 - The patent owner may request cancellation of a license if the licensee does not begin effective exploitation within 1 (one) year of the license having been granted, if exploitation is interrupted for more than 1 (one) year or if he does not comply with the conditions for exploitation.
Section III Compulsory Licenses
Article 68 - The patent owner shall be subject to compulsory licensing of his patent if he exercises his rights therein in an abusive manner of if he uses it to abuse economic power according to the law in force, under the terms of an administrative or judicial decision.
Paragraph 1 - The following may also be grounds for a compulsory licensing:
Paragraph 2 - A license may be requested only by a party having a legitimate interest and having the technical and economic capability to effectively exploit the subject matter of the patent for the purposes predominantly of the internal market, in which case the exception contained in item I of the previous paragraph shall not apply.
Paragraph 3 - If a compulsory license is granted on the grounds of abuse of economic power, a period of time, limited by provisions of art 74, shall be secured to a licensee to import the subject matter of the license, provided it has been placed on the market directly by the patent owner or with his consent.
Paragraph 4 - In the event of an import to exploit a patent or import as provided for in the preceding paragraph, third parties shall also be allowed to import a product manufactured according to a process patent or a product patent, provided that it has been placed on the market by the patent owner or with his consent.
Paragraph 5 - A compulsory license under Paragraph 1 may only be requested 3 (three) years after patent grant.
Article 69 - A compulsory license shall not be granted if, on the date of the request, the patent owner:
Article 70 - The compulsory license may also be granted where the following circumstances are shown to apply in conjunction:
Paragraph 1 - For the purposes of this article a dependent patent means a patent whose exploitation absolutely depends on the use of the object of a previous patent.
Paragraph 2 - For the purposes of this article, a process patent may be deemed dependent on a patent for the concerned product, and likewise, a product patent may be dependent on a process patent..
Paragraph 3 - The owner of a patent subject to a license according to the provisions of this Article shall have the right to a compulsory license under the dependent patent.
Article 71 - In cases of national emergency or of public interest, declared in a specific decision of the Federal Government, provided that the patent owner or his licensee do not satisfy such need, a temporary non-exclusive compulsory license to exploit the patent may be granted ex officio without prejudice of the rights of the owner of the patent.
Sole Paragraph - The instrument granting the license shall set out its term of validity and the possibility of extension.
Article 72 - Compulsory licenses shall always be non exclusive and sub-licensing shall not be permitted.
Article 73 - An application for a compulsory license shall set forth the conditions offered to the patent owner.
Paragraph 1 - On filing of the license application, the patent owner shall be invited to submit his comments within a period of 60 (sixty) days, on expiry of which, in the absence of a reply from the patent owner, the proposal shall be deemed accepted under the conditions offered.
Paragraph 2 - An applicant for a license who alleges abuse of patent rights or the abuse of economic power shall be required to submit documentary proof.
Paragraph 3 - If a compulsory license is applied for on grounds of failure to exploit, the patent owner shall prove the exploitation of the patent.
Paragraph 4 - In the event of contestation, INPI may take the necessary measures, including the establishment of a committee that may include independent experts, to arbitrate on the remuneration to be paid to the patent owner.
Paragraph 5 - The agencies and entities of direct or indirect federal, state or municipal administration shall provide INPI with such information as requested to assist in the arbitration of the remuneration.
Paragraph 6 - To arbitrate remunerations, the circumstances of each case shall be taken into consideration and shall include the economic value of granted license.
Paragraph 7 - Once the case has been examined, INPI shall decide on the grant and on the conditions of a compulsory license within a period 60 (sixty) days.
Paragraph 8 - Appeals from decisions to grant a compulsory license shall not have a suspensive effect.
Article 74 - Unless he has legitimate reasons, the licensee shall begin exploiting the subject matter of the patent within a period 1 (one) year as from the grant of the license, and an interruption for a similar period of time shall be permitted.
Paragraph 1 - The owner of the patent may request cancellation of the license if the provisions of this Article are not complied with.
Paragraph 2 - The licensee shall have full powers to defend the patent.
Paragraph 3 - Once a compulsory license has been granted, assignment of such license shall only be permitted together with the assignment, transfer or lease of that part of the enterprise that exploits it.
CHAPTER IX: PATENT OF INTEREST TO NATIONAL DEFENSE
Article 75 - An application for a patent originating in Brazil of which the subject matter is of interest to national defense shall be prosecuted subject to secrecy and shall not be subject to the publications provided for in this Law.
Paragraph 1 - INPI shall promptly forward the application to the competent Government agency, which shall issue an opinion on secrecy within a period of 60 (sixty) days. If such period expires without the competent agency giving an opinion, the application shall be prosecuted normally.
Paragraph 2 - Except if previous consent is given by of the competent government agency, filing of an application for a patent of which the subject matter is deemed to be of national defense interest shall not be made abroad nor shall any disclosure of thereof be allowed.
Paragraph 3 - Exploitation and assignment of the application or patent of interest to national defense shall be subject to prior authorization from the competent agency; equitable compensation shall be assured whenever this implies a restriction to the rights of the applicant or patent owner.
CHAPTER X: CERTIFICATE OF ADDITION
Article 76 - An applicant or the patent owner, on payment of a specific fee, may request a certificate of addition to protect an improvement or development of the subject matter of the invention, even where it lacks inventive step, provided that it shares the same inventive concept.
Paragraph 1 - Where main application has already been published, the request for a certificate of addition shall be published at once.
Paragraph 2 - An application for a certificate of addition shall be examined in accordance with provisions of articles 30 to 37, without prejudice of the provisions of the preceding paragraph.
Paragraph 3 - An application for a certificate of addition shall be rejected if its subject matter does not share the same inventive concept.
Paragraph 4 - An applicant may, within the period for appeal, request the conversion of an application for a certificate of addition to a patent application that, on payment of applicable fees, shall enjoy the filing date of the application for the certificate.
Article 77 - The certificate of addition shall be accessory to the patent, shall have the same date of expiry and shall accompany it for all legal effects.
Sole Paragraph - In proceedings for nullity, the patent owner may request that the subject matter of the certificate of addition should be examined to check whether it may subsist without prejudice of the term of protection of the patent .
CHAPTER XI: LAPSE OF PATENT
Article 78 A patent shall lapse:
Sole Paragraph - On lapse of a patent, its subject matter shall fall into the public domain.
Article 79 - Renunciation shall only be accepted if it does not prejudice the rights of third parties.
Article 80 - Patent shall be forfeited, ex officio or at the request by any party having a legitimate interest, if after 2 (two) years from the grant of a first compulsory license, this period has not been sufficient to prevent or remedy abuse or misuse, unless there are legitimate reasons.
Paragraph 1 - Patent shall be forfeited if, on the date of a request for forfeiture or of the ex officio institution of the corresponding proceedings, exploitation of the patent has not yet begun.
Paragraph 2 - In forfeiture proceedings filed upon request, if the applicant desists INPI may pursue the proceedings.
Article 81 - The title holder shall be invited by a publication to submit comments on the request for forfeiture within a period of 60 (sixty) days and shall be required to furnish proof of the exploitation.
Article 82 - Decisions shall be issued within 60 (sixty) days as from the end of the period referred to in the preceding Article.
Article 83 - A decision in proceedings for forfeiture shall take effect as from the day of the request or of the publication of ex officio institution of proceedings.
CHAPTER XII: ANNUAL FEES
Article 84 - The applicant and patent owner shall be required to pay annual fees as from the beginning of the third year after the filing date.
Paragraph 1 - Advance payment of annual fees shall be regulated by INPI.
Paragraph 2 - Payment shall be made within the first 3 (three) months of each annual period, but it may also be made within the following 6 (six) months, independently from any notification, on payment of an additional fee.
Article 85 - The provisions of the previous article shall apply to international applications filed under a treaty in force in Brazil, and payment of annual fees due prior to the date of entry into the national phase shall be made within a period of 3 (three) months from that date.
Article 86 - Failure to make payment of the annual fee, in accordance with provisions of articles 84 and 85, shall result in the application being deemed withdrawn or lapse of the patent.
CHAPTER XIII: RESTORATION
Article 87 - A patent application or a patent may be restored on request by the applicant or patent owner within 3 (three) months from notification of having been deemed withdrawn or lapse of the patent, on payment of a specific fee.
CHAPTER XIV: INVENTIONS OF UTILITY MODELS MADE BY EMPLOYEES OR SERVICE PROVIDERS
Article 88 - An invention or utility model shall belong exclusively to the employer if it results from the enforcement in Brazil of an employment contract the subject of which is research or the exercise of inventive activity or if such invention or utility model results from the nature of the services which the employee was contracted to provide.
Paragraph 1 - Except as otherwise stipulated by contract the remuneration for the work this Article reefers shall be limited to agreed salary.
Paragraph 2 - In the absence of proof to the contrary, an invention or utility model for which a patent is sought by an employee within 1 (one) year from termination of the employment contract shall be deemed to have been developed during the term of the contract.
Article 89 - Where the employer is the owner of the patent, he may award to the employee who is the author of the invention or improvement a participation in the economic gain resulting from the exploitation of the patent, by negotiating with the interested party or in accordance with the rules of the company.
Sole Paragraph - The participation referred to in this Article shall not be incorporated in any way to the salary of the employee.
Article 90 - An invention or utility model developed by an employee shall belong exclusively to the employee, provided that it is in no way connected to his employment contract and if it does not result from the use of resources, means, data, materials, facilities or equipment of the employer.
Article 91 - An invention or utility model shall be joint property, in equal shares, if it results from the personal contribution of the employee and resources, data, means, materials, facilities or equipment of the employer, without prejudice of express contrary contractual provisions.
Paragraph 1 - If more than one employee is involved, employees share shall be divided equally between them, except as agreed to the contrary.
Paragraph 2 - The employer shall be entitled to the exclusive right of license for exploitation and the employee shall be entitled to a fair remuneration.
Paragraph 3 - The exploitation of the subject matter of the patent, if agreement has not been reached on the issue, shall be started by the employer within 1 (one) year, as from the date of the grant, under penalty of the ownership of the patent being transferred as an exclusive right to the employee, except where there are legitimate reasons for the failure to exploit.
Paragraph 4 - In the event of an assignment, any of the joint owners, under the same conditions, may exercise preference rights.
Article 92 - The provisions of the preceding articles shall apply, as appropriate, to the relationship between an independent worker or a trainee and the contracting enterprise and between enterprises that are parties to a contract.
Article 93 - The provisions of this Chapter shall apply, as appropriate, to entities of direct or indirect or foundational, federal, state or municipal public authorities.
Sole Paragraph - Under Article 88 the inventor shall be entitled to an award corresponding to a share of the value of the benefits obtained due to the application , subject to the terms and conditions set forth by the statutes and internal regulations of the entity to which this Article refers.
TITLE II: INDUSTRIAL DESIGNS
CHAPTER I: OWNERSHIP
Article 94 - The author shall be afforded the right to obtain registration of an industrial design, that secures him the ownership of the design, under the terms established by this Law.
Sole Paragraph - The provisions of articles 6 and 7 shall apply mutatis mutandis to the registration of industrial designs.
CHAPTER II: REGISTRABILITY
Section I: Registrable Industrial Designs
Article 95 An industrial drawing shall be deemed to be any ornamental plastic form of an object or any ornamental arrangement of lines and colors which may be applied to a product, obtaining a new and original visual result in its external configuration and that may serve as a model for industrial manufacture.
Article 96 - An industrial drawing is deemed new if it is not comprised in the state-of-the-art.
Paragraph 1 - The state-of-the-art shall comprise everything made available to the public before the filing date of the application, in Brazil or abroad, by use or by any other means, without prejudice to the provisions of paragraph 3 of this Article and of article 99.
Paragraph 2 - For the sole purpose of determining novelty, the complete contents of an application for a patent or for registration filed in Brazil, but not yet published, shall be considered to be included in the state-of-the art as from the date of filing or of claimed priority, provided the application is published even if subsequently.
Paragraph 3 - An industrial design that is disclosed within 180 ( one hundred and eighty) days preceding the filling date of the application or the claimed priority shall not be considered to be included in the state-of-the-art, provided disclosure was made in the situations referred to in items I to III of Article 12.
Article 97 - An industrial design is deemed to be original if it results in visual configuration that is distinctive in relation to existing objects.
Sole Paragraph - The original visual result may be the result of a combination of known elements.
Article 98 - Works of a purely artistic nature shall not be considered industrial designs.
Section II: Priority
Article 99 - The provisions of Article 16, except for the time limit referred to in paragraph 3 of that Article, which shall be of 90 (ninety) days, shall apply mutatis mutandis to applications for registrations.
Section III: Non-Registrable Industrial Designs
Article 100 - An industrial design shall not be registrable if:
CHAPTER III: APPLICATIONS FOR REGISTRATION
Section I: Filing of Applications
Article 101 - An application for registration shall contain, in compliance with INPI provisions:
Sole Paragraph - Documents comprised in an application for registration shall be filed in Portuguese language.
Article 102 - On submission, an application shall be subject to a formal preliminary examination and if found in order, shall be recorded and the date of submission shall be deemed the filing date.
Article 103 - An application that does not meet the formal requirements of Article 101, but which contains sufficient particulars of the applicant, the industrial design and the author, may be submitted to INPI, in return for a dated receipt and. INPI shall establish the conditions to be met within a period of 5 (five) days, under penalty of being deemed withdrawn.
Sole Paragraph - Once the requirements have been met, the filing shall be deemed to be made on the date in which the application was submitted.
Section II: Conditions of Applications
Article 104 - An application for industrial design registration shall refer to a single object, of which a plurality of variations shall be permitted, provided that they are intended for the same purpose and all possess the same predominant distinctive characteristic; each application is limited to a maximum of 20 variations.
Sole Paragraph - The drawing shall clearly and adequately represent the object and its variations, where applicable, in such a manner as to permit reproduction by a person skilled in the Article.
Article 105 - Where secrecy is requested under Paragraph 1 of article 106, the application may be withdrawn within a period of up 90 (ninety) days as from the date of the filing.
Sole Paragraph - Withdrawal of an earlier application that produces no effect, shall confer priority to the first subsequent application.
Section III: Prosecution and Examination of Applications
Article 106 - Once the application for an industrial design registration has been filed and the provisions of articles 100, 101 and 104 have been complied with, it shall be published automatically, registration shall be granted simultaneously and the relevant certificate shall be issued.
Paragraph 1 - At the request of the applicant made at the time of the filing, an application may be kept secret for a period of 180 (one hundred and eighty) days as from the filing date, following which it shall be prosecuted.
Paragraph 2 - If an applicant avails himself of the provisions of Article 99, the application shall not be prosecuted until the priority document is filed.
Paragraph 3 - If the provisions of articles 101 and 104 are not complied with a notification shall be issued and the applicant shall be given 60 days to submit his reply, on pain of the application being deemed definitively withdrawn.
Paragraph 4 - If provisions of article 100 are not complied with, the application for registration shall be rejected.
Continuation: CHAPTER IV - GRANT AND TERM OF REGISTRATION