PATENT APPLICATIONS FILING REQUIREMENTS IN BRAZIL:
For filing a patent application in Brazil, the following documents are required:
a) Application text:
The application must comprise specification, claims, abstract, and drawings, if any, in Portuguese language. In this regard, the original documents in foreign language must be received by our offices within a reasonable term in order to enable us to prepare the necessary Portuguese version thereof. For PCT national phase filings, we may obtain the application text directly from the WIPO database.
b) Power of Attorney:
A power of attorney, simply signed by the Applicant (or authorized officer) , also informing the name and function of the executor in the company. It may be submitted either along with the filing petition or within 60 days from the local filing date. Neither notarization nor legalization is required.
c) Priority document:
If priority is claimed under Paris Convention, a certified copy of the claimed priority application(s)must be presented along with the filing petition or within 180 days from the local filing date. For PCT-national phase filings, however, a simple declaration or translation of priority documents submitted to WIPO will suffice to support priority rights.
d) Assignment of priority rights/Assignment of the PCT application:
An assignment of rights will be necessary only for those applications where the Applicant of the Brazilian Application is different from:
(1) the Applicant of priority application(s), and/or
(2) the Applicant of the PCT Application. For this purpose, you may use either our assignment form (enclosed herewith) or any other assignment document already signed between the parties, like a worldwide assignment form, which, in turn, shall be submitted along with a simple Portuguese version thereof, for compliance with local practice.
e) Qualification of the parties:
At the time of filing, The Brazilian Patent Office requires complete information from applicants and inventors, such as full name, address, nationality and, for natural persons, the profession or occupation.
f) Amendments, if any:
Amendments to the application text shall be accepted if they not incur in addition of new subject matter not originally disclosed.
Convention cases must be filed within the conventional 1-year term. The PCT-National phases must be started within 30 months. These terms are not extensible.
PATENT APPLICATION PROCEDURE IN BRAZIL:
Period of non-disclosure and Publication:
An application is kept under secrecy during at least 18 months counted from the earliest priority date, if any.
The publication then being notified in the Brazilian Official Gazette.
REQUEST FOR EXAMINATION:
A formal request for examination must be filed within 36 (thirty six) months from filing date. Voluntary amendments to the original application may be submitted until the examination is requested. Voluntary amendments can be submitted until the filing of request for examination. After the examination is requested, the presentation of voluntary amendments the claims may only be accepted if directed to restrict the scope of the originally claimed protection.
As a result of examination proceedings, the BPTO shall notify the applicant of the issuance of one of the following technical reports in the Brazilian Official Gazette: an official action requesting compliance with a given requirement, an unfavourable opinion indicating objections against the claimed invention, a granting or rejecting decision.
The 60 or 90-day term for responding a technical report, depending on the nature of the action, is not extensible. If an application is rejected, a 60-day term is automatically opened, during which an appeal can be filed against the rejecting decision. Appeals against allowing decisions are not possible.
PROCEEDINGS TO ASSIST EXAMINATION
Any interested party may, at any time during examination, present prior art documents and information to assist examination. In case the Examiner considers said documents as relevant for the analysis of patentability, the examiner will then issue a technical opinion discussing the information brought and inviting the applicant to present a manifestation.
The deadline for presenting a petition to assist examination is, according to the current understanding of the Brazilian Patent Office, the end of the examination, which “(…) is deemed to be the date of the conclusive opinion report regarding patentability, or the thirtieth day prior to the publication of the decision of acceptance, rejection or definitive abandonment, whichever of these is the last to occur”.
ALLOWANCE AND GRANT:
Within a 60 day-term counted as of the notice of allowance, payment of the issuance fees should be made (an additional subsequent 30-day period is available for payment of the issuance fee with a surcharge).
Afterwards, according to current practice the electronic Letters-Patent is issued. Letters-Patent pressed on paper are no longer provided by the Brazilian PTO. Administrative annulment proceedings can be started by third parties, or even by the Patent Office itself, within a period of 6 months counted as from the publication of the Letters-Patent's issuance.
TERM OF VALIDITY OF PATENTS:
Patents of Invention in Brazil are valid for a 20-year term starting on the filing date. However, the Law also foresees a minimum term of 10 years counted as from the issuance of the Letters-Patent. Utility Model Patents are valid for a 15-year term starting on the filing date, however, the Law also foresees a minimum term of 7 years counted as from the issuance of the Letters-Patent document.
ADMINISTRATIVE NULLITY PROCEEDINGS
Any interested party may request the administrative nullity of a patent within a 6-month term counted as from the date the patent is granted. The nullity procedure may also be instituted ex officio. The patentee will be notified to reply within a 60-day term. After that, an opinion will be issued, and both parties will be invited to manifest within a new common 60-day term. The final decision will then be published thus finishing administrative proceedings.
In accordance to the Brazilian Industrial Property Law, a Patentee who has not started to work the patent, in the Country, within three years, counted as from the date in which the patent was issued, or has discontinued the working for more than one year, may be forced to grant a compulsory license at the request of any third party.
In case working has not started after two years of the granting of a compulsory license, the patent may be declared forfeited, either "ex-officio" or by the request of any interested third party.
Please bear in mind that actual working may only be replaced or supplemented by importation in cases where local production is considered as economically unfeasible. At last, please note that nominal workings may be performed through an offer of license to be published in the Brazilian Official Gazette.
This option also has the interesting advantage of reducing the annuity fees to half of their normal amount while the offer is pending. Please contact us in case you have specific questions concerning patent licenses.
MARKING OF PRODUCTS
The Brazilian law has no specific requirements regarding the marking of a product with indication of the patents or patent applications protecting such product.
The act of marking could warn a third party (in good faith) that a patent protected product should not be copied/infringed. n the other hand, it is important to mention that false Patent Marking is considered an act of unfair competition which in Brazil is both criminal and civil tort.
Both patent application and granted may be assigned at any time. The assignment document must be signed by both parties and by two witnesses. The signatures of the parties must be notarized and legalized by Apostille. A power of attorney granting us powers to represent the assignee must be presented with the request for the recordal.
CHANGE OF NAME
The change of name must be attested either by a short statement of the Commerce Registrar certificating the change of name or by a declaration from the owner attesting thereto. This document must be legalized by a Brazilian Consul. A power of attorney, updated with the new name of the applicant/patentee, must be presented with the request for the recordal.
CHANGE OF ADDRESS
For recording a new address, it is only necessary to present a new power of attorney giving the new address for the applicant/patentee.
Every year, annuity fees must be paid in connection with patent applications and granted patents. However, the annuities become due only in the beginning of the third year of life of the application/patent or, in other words, two years after the filing date. The regular payment of the annuities must be made within the 3-month period following the anniversary of the filing date. After said initial term, an additional grace period of six months is granted upon payment of extraordinary fees.
According to the Brazilian IP Law, industrial design applications are not common patent applications. Instead, an industrial design registration may be applied for. In these cases, a technical examination is performed only upon a specific request presented by the Applicant after the concession of the industrial design registration.
We call your attention to the fact that no direct notification to Applicants nor to the corresponding Agents on file is made by the Brazilian Patent and Trademark Office. Instead, the attorneys and agents must monitor the notices/decisions published in the Brazilian Official Gazette every week.
Trademark Law in Brazil :
Legal basis is the Industrial Property Law, in force since May 15th, 1997. Brazil is part of the main Treaties and Conventions, such as Paris Convention, TRIPS, Nice (classification) and the Madrid Protocol as of October 2, 2019.
Trademark protection is obtained by registration. Limited rights derive from earlier use in commerce and special protection is afforded to well-known marks. The system in Brazil is considered hybrid. It is a declaratory system, with the possibility of priority to registration if presented prior use in an opposition, respecting some particulars described in the Law.
GENERAL INFORMATION FOR TM REGISTRATION IN BRAZIL
- Multi-class applications are not allowed in Brazil. Accordingly, for each class of interest an individual application is required.
- In case of a priority claim, the specification of products and services must be identical or narrower than those claimed in the basic application. On the other hand, it is possible to use more than one application, in the same class, as basis for one priority claim.
- Brazil is a first to file country and trademark rights are only acquired upon registration, which means that the filing date is of main importance.
- Trademarks filed without a claim of colors, once granted, can be used with any color or combination of colors. Trademarks filed with claim of colors, once granted, must be used exactly as filed.
- If everything runs smoothly with an application the current length of time between its filing and the allowance or rejection decision issued by the Brazilian PTO is one year. If the application is allowed, once the final issuance fees are paid the grant of the corresponding registration should occur 6 months later and the issuance of the certificate of registration a couple of months after that.
- No proof of use is required either for the filing of an application or for the granting of the corresponding registration. However, a registration does become vulnerable for cancellation on the grounds of non-use if use is not initiated within five years of its grant or is discontinued for more than five years afterwards.
- Generic or descriptive signs, which do not carry sufficient distinctiveness, are not registrable as trademarks in Brazil. Advertising expression may be registered but only if they are also used as trademarks. Nonetheless, in both cases, the criteria of analysis of the Brazilian PTO is very restrictive.
REQUIRED DOCUMENTS FOR TRADEMARK REGISTRATION IN BRAZIL
The Documents required for the filing of an application are the following:
- A Power of Attorney, which does not require notarization or legalization and should be signed by an authorized officer, whose name and title must be typed below the signature.
This document can be submitted together with the application or within sixty days counted from its filing (at additional costs).
- An official copy (or its reproduction) of the Priority Document, if priority is to be claimed. Please note that according to the Brazilian PTO’s new policy, simple extracts of the basic application printed from the origin Trademark Office online database is sufficient. Please also note that only one copy is required even if the intended application is to be filed in various classes. This document will need to be translated into Portuguese and can be submitted together with the application or within four months counted from its filing (at additional costs). However, since certified copies are no longer required, the extension term will be unnecessary in almost all cases.
- Both the Power of Attorney as well as the document attesting to the priority can be sent to us by e-mail.
- APPLICANT: complete name and address.
- MARK DESCRIPTION: for composite or figurative marks we need to be provided with a sample of the mark as well as with your confirmation if colors are to be claimed.
- PRODUCTS OR SERVICES OF INTEREST: Official headings are too broad so we must be informed of the specific products or services which are to be claimed. Please bear in mind that, upon filing, we will declare that the Applicant is directly or indirectly engaged in claimed products or services.
Trademark Registration Procedure in Brazil:
- The application is filed at the Brazilian Patent and Trademark Office (BPTO) or through WIPO as an international application through the Madrid Protocol System.
- A multi-class system will enter in force as from March 09, 2020, to attend the Madrid Protocol Format. It will also be possible, from same date, the co-ownership and partial assignment of a mark, respecting some rules for non-confliction.
- For international applications form the Madrid Protocol, the designated process and registration in Brazil will not need a representative, however, it will be necessary for any act than the ones made through WIPO and it is highly recommended to have a local representative to avoid loss of rights.
- A simply signed power of attorney in PDF format suffices for all trademark filings in the name of the same owner.
- The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. The processing time from filing to registration is approx. 18 months, in case of a smooth procedure.
- Prior to registration, the trademark application is published approx. 1 month after the application date in the weekly gazette “Revista da Propriedade Industrial” (RPI).
- A trademark search with a local attorney or agent is highly recommended.
National Opposition Period
The opposition period is 60 days from the publication date of the application.
After the granting decision it is also possible to file an administrative cancellation action at the BPTO within 180 days from the granting decision publication. After that period the registration can be canceled through a Dederal Court Lawsuit decision.
TIMEFRAME: On average, takes approximately 12-18 months for each trademark application to mature into registration. The processing time from filing to registration is approx. 18 months, in case of a smooth procedure. In case of extraordinary situations, such as office actions, oppositions or rejection, a further delay is expected to occur (which would be 4 years).
VALIDITY: A trademark is valid for 10 years from its registration date and it can be renewed during the last 12 months prior to the expiration date.
EXAMINATION: The BTPO will examine absolute and also relative grounds (regarding prior marks/applications) in order to accept or reject a trademark application.