BPTO published on 12/30/2022 the terms of the meeting held on 12/28/2022 (attached) regarding new guidelines aimed at easing and reducing bureaucracy in the performance of services related to the registration/recordal of technology transfer agreements ((Deliberações a respeito de contratos de transferência de tecnologia — Português (Brasil) (www.gov.br))
The measures tend to make the registration of technology transfer agreements faster and less costly for the parties, and the main motive for these improvements was proposed by the Licensing Executive Society (LES) Brasil and by the International Chamber of Commerce – ICC-Brasil.
Among these measures, there is the removal of the requirement to initial the parties on all pages, which was the motive for several office actions during the agreement’s registration process. Besides, BPTO waived the requirement for notarization and apostille/legalization of foreign signatures and allowed electronic signatures without the ICP Brasil certification.
Also, there will no longer be a need for two witnesses to sign the agreements, when a Brazilian city is provided as the place of signature since the Brazilian legal system does not impose this obligation on private contracts, although such requirement is needed to ensure the execution of such agreements based on extrajudicial title, under the terms of the Brazilian Civil Procedure Code.
With regard to documentation, the need to present the bylaws, articles of association or articles of incorporation of the legal entity and the last amendment on the consolidated corporate purpose and legal representation of the legal entity as assignee, franchisee or licensee or resident in Brazil was waived.
Also, it was made unequivocal the acceptance of transfer technology agreements based on non-patented technology, such as know-how, with a view to aligning to international practices for promoting technological innovation in OECD countries.
On the issue of royalties, a consultation was forwarded to the BPTO’s Specialized Federal Attorney’s Office for the extension of the understanding that allows the payment of such remuneration in relation to agreements that have as object applications (and not registrations) of trademarks, for those related to patents, industrial designs and other intellectual and industrial property assets.
Apparently, there is a clear tendency of the BPTO to align with international practices, thus focusing on encouraging innovation, access to technologies and generating foreign exchange for the country.
Finally, we remind below the types of contracts accepted for registration by the BPTO:
License and assignment agreements of industrial property rights (patents, trademarks, industrial designs) and topographies of integrated circuits; agreements not supported by industrial property, such as the supply of technology, technical and scientific assistance services, provided for in art. 211 of Law 9279/1996; franchise agreements related to a business model; and now, license of know-how agreements.
For more information or questions, please contact our Intellectual Property team.