Law no. 9.279, of May 14,1996

Regulating Industrial Property Rights and ObligationsTHE PRESIDENT OF THE REPUBLICBe it known that the National Congress has decreed and I sanction the following law:

TABLE OF CONTENTS

TITLE I - PATENTS

CHAPTER I - OWNERSHIP

Article 6 - The author of an invention or of a utility model shall be afforded the right to obtain a patent securing him the property therein, under the terms set out by this Law.

Paragraph 1 - Unless otherwise proven the applicant shall be presumed to be entitled to obtain a patent.

Paragraph 2 - The patent may be applied for by its author, his heirs or successors in title, by an assignee or by any person designated the owner by law or by an employment contract or by a contract of service.

Paragraph 3 - If an invention or utility model is created jointly by two or more persons, a patent may be applied for by all or one of such persons, giving the name and particulars of the others, in order to safeguard their rights

Paragraph 4 - The inventor shall be named and his particulars given, but he may request that his name should not be disclosed.

Article 7 - If two or more authors created the same invention or utility model, independently of each other, the right to obtain a patent shall belong to the person proving the earliest filing date, irrespective of the dates of invention or creation.

Sole Paragraph - The withdrawal of an earlier filing that has not had any effect shall give priority to the filing that immediately follows.

CHAPTER II - PATENTABILITY

SECTION I - PATENTABLE INVENTIONS AND UTILITY MODELS

Article 8 - An invention shall be patentable if it meets the requirements of novelty, inventive step and industrial application.

Article 9 - An object of practical use, or part thereof, shall be patentable as utility model if it is susceptible of industrial application, presents a new shape or arrangement and involves inventive step, resulting in functional improvement in its use or manufacture.

Article 10 - The following shall not be considered inventions or utility models:

I - discoveries, scientific theories and mathematical models;

II - purely abstract concepts;

III - schemes, plans, principles or methods of a commercial, accounting, financial, educational, or advertising nature or for games of chance or surveillance;

IV - literary, architectural, artistic and scientific works or any aesthetic creation;

V - computer programs per se;

VI - presentations of information;

VII - rules for games;

VIII - techniques and methods for operations or surgery or methods for therapy or diagnosis applied to human or animal body; and

IX - all or part of natural living beings and biological materials found in nature, or isolated therefrom, including the genome or germ plasm of any natural living being and the natural biological processes.

Article 11 - An invention or utility model shall be considered to be new if it does not form part of the state-of -the-art.

Paragraph 1 - State-of-the-art shall be held to comprise everything made available to the public, by means of a written or oral description, by use, or in any other way, before the filing date of the patent application, in Brazil and abroad, except as provided for in Articles 12, 16 and 17.

Paragraph 2 - For the purposes of determining novelty, the full contents of an application filed in Brazil, but not yet published, shall be deemed comprised in the state-of-the-art as from the date of filing or of claimed priority, provided that published, even if subsequently.

Paragraph 3 - The provisions of the preceding paragraph shall apply to an international patent application filed in accordance with the provisions of a treaty or convention in force in Brazil, provided that there is national processing.

Article 12 - The disclosure of an invention or utility model occurring during the 12 (twelve) months preceding the filing date, or priority date, of the application shall not be considered to be comprised in the state of the art if made:

I - by the inventor;

II - by the National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial) INPI, through official publication of an application filed without the consent of the inventor, based on information obtained from the inventor or as a result of his acts; or

II - by third parties on the basis of information obtained directly or indirectly from the inventor or as a result of his acts.

Sole Paragraph - INPI may require from the inventor a statement relating to the disclosure, accompanied or not by evidence, under the conditions established in the regulations.

Article 13 - An invention shall be considered as involving an inventive step if, for a person skilled in the art, it does not result patently or obviously from the state-of-the-art.

Article 14 - An utility model shall be considered as involving an inventive step if for a person skilled in the art, it does not result commonly or usually from the state-of-the-art

Article 15 - Inventions or utility models shall be considered as susceptible of industrial application if they can be used or made in any kind of industry.

SECTION II - PRIORITY

Article 16 - A patent application filed in a country that has an agreement with Brazil or filed with an international organization, having the effect of a national filing, shall enjoy a priority right within the time limits established in the agreement, and shall not be invalidated or prejudiced by events occurring within such time limits.

Paragraph 1 - A claim to priority shall be made at the time of filing, and may be supplemented within 60 (sixty) days by other priorities that are earlier than the date of the filing in Brazil.

Paragraph 2 - A claim to priority shall be supported by a valid document of origin, stating number, date, title, description and, where appropriate, claims and drawings, accompanied by an uncertified translation of the filing certificate or equivalent document, containing data identifying the application, the contents of which shall be at the entire responsibility of the applicant.

Paragraph 3 - If not submitted at the time of filing, the evidence shall be submitted within 180 (one hundred and eighty) days of the filing date.

Paragraph 4 - For international applications filed under a treaty in force in Brazil, the translation referred to in paragraph 2 shall be filed within 60 (sixty) days from the date of entry into the national phase.

Paragraph 5 - If an application filed in Brazil is faithfully reproduced in the document of origin, a statement to such effect by the applicant shall suffice to replace the uncertified translation.

Paragraph 6 - Where priority is obtained by assignment, the corresponding document shall be filed within 180 (one hundred and eighty ) days of the filing date or within 60 (sixty) days of the date of entry into the national phase, where appropriate, whereby consular legalization in the country of origin shall not be required.

Paragraph 7 - Failure to provide evidence within the time limits provided for in this article shall result in loss of the priority.

Paragraph 8 - Where an application has been filed with a claim to priority, any request for early publication shall be accompanied by evidence of the priority.

Article 17 - An application for a patent for an invention or a utility model originally filed in Brazil, without claiming priority and not yet published, shall afford a right of priority with respect to a subsequent application for the same subject matter filed in Brazil by the same applicant or his successor in title, within a period of one year.

Paragraph 1 - Priority shall be enjoyed only by subject matter disclosed in the earlier application, and shall not be extended to any new matter introduced.

Paragraph 2 - The pending earlier application shall be deemed to have been definitively withdrawn.

Paragraph 3 - An application resulting from the division of an earlier application may not serve as the basis for claiming priority.

SECTION III - NON PATENTABLE INVENTIONS AND UTILITY MODELS

Article 18 - The following shall not be patentable:

I - anything contrary to morality, decency or public safety, order and public health;

II - substances, materials, compounds, elements or products of any kind, including the modification of their respective physical-chemical properties and the respective processes for obtaining or modifying them, when they result from the transformation of the atomic nucleus; and

III - living beings, in whole or in part, except for transgenic microorganisms meeting the three requirements of patentability - novelty, inventive step and industrial application - provided for in Article 8 and which are not mere discoveries.

Sole Paragraph - For the purposes of this law, transgenic microorganisms are organisms, except for plants or animals, in whole or in part, that due to direct human intervention in their genetic composition, express a characteristic that cannot be normally achieved by the species under natural conditions

CHAPTER III- PATENT APPLICATIONS

SECTION I - FILING OF APPLICATION

Article 19 - Patent applications shall contain, in accordance with the conditions laid down by INPI;

I - request;

II - description;

III - claims;

IV - drawings, if any;

V - an abstract;

VI - proof of payment of the filing fee.

Article 20 - Once it has been submitted, the application shall be subject to a formal preliminary examination and if found in order, shall be recorded and the date of submission shall be the filing date.

Article 21 - An application that does not meet the formal requirements of Article 19, but which contains data relating to the object, the applicant and the inventor, may be submitted to INPI in return for a dated receipt setting out the requirements to be met, within a period of 30 (thirty) days, failing which the documentation shall be returned or deemed withdrawn.

Sole Paragraph - Once the requirements have been met, the filing shall be considered to have been made on the date of receipt.

SECTION II - REQUIREMENTS OF APPLICATION

Article 22 An application for a patent for an invention shall relate to one invention or to a group of inventions so linked as to form a single inventive concept.

Article 23 - An application for a patent for a utility model shall relate to a principal model, which may include a plurality of distinct additional elements or variations of structure or configurations, provided that the technical-functional and material unity of the object is maintained.

Article 24 The description shall clearly and sufficiently describe the object, thus enabling the object to be carried out by a person skilled in the art and shall, where appropriate, indicate the best manner of execution.

Sole Paragraph - In case of biological material essential for carrying out the object of the application, which cannot be described in accordance with this article and which is not accessible to the public, the description shall be supplemented by the deposit of the material with an institution authorized by INPI or referred to in an international agreement.

Article 25 - The claims shall be supported by the description, shall characterize the special features of the application, and shall clearly and precisely define the subject matter for which protection is sought.

Article 26 - An application may be divided in two or more applications ex officio, or at the request of the applicant, up to termination of the examination, provided that the divisional application:

I - makes specific reference to the original application; and

II - does not extend beyond the subject matter disclosed in the original application.

Sole Paragraph - A request for division that does not comply with the provisions of this Article shall be deemed withdrawn.

Article 27 - Divisional applications shall enjoy the filing date of the original application and, where applicable, shall have the benefit of any priority enjoyed by the original application.

Article 28 - Each divisional application shall be subject to the payment of the corresponding fees.

Article 29 - A patent application that is withdrawn or abandoned must be published.

Paragraph 1 - Requests for withdrawal shall be filed within 16 (sixteen) months from the date of filing or of earliest priority.

Paragraph 2 - Withdrawal of an earlier application that has not produced any effect shall lead to the assignment of priority to the earliest subsequent application.

SECTION III - PROSECUTION AND EXAMINATION OF APPLICATION

Article 30 - Patent applications shall be kept secret for a period of 18 (eighteen months) as from the date of the filing or of earlier priority, if any, following which, they shall be published, except as provided for in Article 75

Paragraph 1 - Early publication may be effected at the request of the applicant.

Paragraph 2 - Publication shall include data identifying the application, a copy of the description, the claims, the abstract and drawings shall be available to the public at INPI.

Paragraph 3 - In the case referred to in the Sole Paragraph of Article 24, the biological material shall be made available to the public at the time of the publication to which this Article refers.

Article 31 - Documents and information intended to assist the examination may be filed by the interested persons between publication of the application and completion of the examination.

Sole Paragraph - Examination shall not begin earlier than 60 (sixty) days after publication of the application.

Article 32 An applicant may make amendments to clarify or better define his application up to the time of the request for examination, provided that amendments do not go beyond the subject matter initially disclosed in the application.

Article 33 - Examination of a patent application shall be requested by the applicant or by any interested person, within 36 (thirty six) months as from the filing date, failing which the application shall be deemed withdrawn.

Sole Paragraph - A patent application may be reinstated, at the request of the applicant, within 60 (sixty) days as from having been deemed withdrawn and upon payment of a specific fee, failing which the application shall be deemed definitively withdrawn.

Article 34 Once examination has been requested, the following documents shall be filed within 60 days, whenever requested, failing which the application shall be deemed withdrawn:

I - objections, state of the art searches and results of examination of corresponding applications in other countries, where priority is claimed;

II - documents required to regularize the procedure and examination of the application; and

III - an uncertified translation of the recognized document referred to in paragraph 2 of Article 16, in those cases where the translation has been replaced by the statement referred to in paragraph 5 of that Article.

Article 35 - During the technical examination a search report and an opinion shall be prepared with respect to:

I - the patentability of the subject matter;

II - suitability of the application for the type of protection sought;

III - amendment or division of the application; or

IV - technical requirements.

Article 36 - Where the opinion ascertains the non-patentability of the application or the non-suitability of subject matter for the type of protection sought or if the opinion sets any conditions, the applicant shall be invited to submit comments on the issues within a period of 90 (ninety) days.

Paragraph 1 - If there is no reply to a condition the application shall be deemed definitively withdrawn.

Paragraph 2 - If there is a reply to a condition, even if the conditions is not complied with, or if its formulation is contested, the examination shall be continued irrespective of the submission of arguments concerning patentability or suitability.

Article 37 - On conclusion of the examination, a decision to allow or deny the application shall be issued.

CHAPTER IV - GRANT AND TERM OF PATENT

SECTION I - GRANT OF PATENT

Article 38 - A patent shall be granted once the application is allowed and, after proof of payment of the corresponding fee is furnished, the respective patent certificate shall be issued.

Paragraph 1 - Payment of the fee and furnishing of proof of payment shall be made within 60 (sixty) days from the date of the formal allowance of the application.

Paragraph 2 - The fee provided for in this Article may also be paid and evidence of payment provided within 30 (thirty) days from the time limit referred to in the preceding paragraph, irrespective of any notification, on payment of a specific fee, failing which the application shall be deemed definitively withdrawn.

Paragraph 3 - The patent shall be deemed granted as from the date of publication of the relevant decision.

Article 39 - The patent certificate shall contain the relevant number, title and nature, inventor name, in accordance with provisions of Article 6 (4), and the particulars and place of residence of the patentee, the term of validity, description, the claims and the drawings, and also any data relating to priority.

SECTION II - TERM OF PATENT

Article 40 - The term of a patent for an invention shall be 20 (twenty) years and for a utility model 15 (fifteen) years as from the filing date.

Sole Paragraph - The term shall not be less than 10 (ten) years for inventions and 7 (seven) years for utility models, as from the date of grant, except where INPI is prevented from carrying out the substantive examination of the application due to pending litigation or for reasons beyond its control.

CHAPTER V - PROTECTION CONFERRED BY PATENT

SECTION I - RIGHTS

Article 41 - The scope of the protection conferred by the patent shall be determined by the terms of the claims as interpreted on the basis of the description and the drawings.

Article 42 - A patent shall afford to its owner the right to prevent others from manufacturing, using, offering for sale, selling or importing for such purposes without his consent:

I - a product that is the subject matter of a patent;

II - a process or product directly obtained by the patented process.

Paragraph 1 - The owner of a patent shall further enjoy the right to prevent others from assisting other parties in carrying out the acts referred to in this Article.

Paragraph 2 - The rights in a process patent shall be deemed to have been infringed, insofar as item II is concerned, if the holder or owner of a product fails to prove, by a specific judicial ruling, that his product was obtained by a manufacturing process different from the process protected by the patent.

Article 43 - The provisions of the previous article shall not apply:

I - to acts carried out privately and without commercial purposes by unauthorized third parties, provided that these acts do not prejudice the economic interests of the patent owner;

II - to acts carried out by unauthorized third parties for experimental purposes, if related to studies or scientific or technological researches;

III - to the preparation of a medicine in accordance with a medical prescription in individual cases, and carried out by a qualified professional, or the medicine thus prepared;

IV - to a product manufactured in accordance with a process or product patent that has been placed on the internal market directly by the patent holder or with his consent;

V - to other persons who, in the case of patents related to living matter, use the patented product, without economic purpose, as an initial source of variation or propagation in order to obtain other products; and

VI - other persons who, in case of patents related to living matter, use, place in circulation, or market a patented product that has been lawfully placed on the market by the owner of the patent or his licensee, provided that the patented product is not used for the commercial multiplication or propagation of the living matter concerned.

Article 44 - A patent owner shall be entitled to compensation for unauthorized exploitation of the subject matter of his patent, including exploitation that occurs between the date of publication of the application and the date of grant of the patent.

Paragraph 1 - If an infringer becomes aware, by any means, of the content of a filed application prior to the publication, the period of unlawful exploitation taken into account for compensation shall run as from the date in which the exploitation began.

Paragraph 2 - If the subject matter of a patent application relates to biological material, deposited according to provisions of the Sole Paragraph of Article 24, the right to compensation shall be granted only when the biological material has been made available to the public.

Paragraph 3 - The right to compensation for unlawful exploitation, including in the period prior the grant of a patent, shall be limited to the subject matter of the patent, as provided for in Article 41.

SECTION II - PRIOR USER

Article 45 - A person who in good faith, prior to the filing or priority date of a patent application, used to exploit the subject matter thereof within the Country, shall be entitled to continue such exploitation under the same form and conditions, without liability.

Paragraph 1 - The right afforded by this Article may only be assigned together with the enterprise or part thereof that is directly related to the exploitation of the subject matter of the patent, by sale or lease.

Paragraph 2 - The right afforded by this Article shall not be enjoyed by a person who obtained knowledge of the subject matter of the patent as a result of disclosure, in accordance with Article 12, provided that the application was filed within 1 (one) year of the disclosure.

CHAPTER VI - NULLITY OF PATENT

SECTION I - GENERAL PROVISIONS

Article 46 - A patent granted contrary to the provisions of this Law shall be null and void.

Article 47 - Nullity may apply to part of the claims only on condition for partial nullity that the remaining claims constitute subject matter patentable in themselves.

Article 48 - Nullity of a patent shall produce effect as from the filing date of the application.

Article 49 Where the provisions of Article 6 have not been complied with, the inventor may, alternatively institute proceedings to claim the ownership of the patent.

SECTION II - ADMINISTRATIVE PROCEDURE FOR NULLITY

Article 50 - Administrative nullity of a patent shall be declared if:

I - any of the statutory requirements have not been met;

II - the description and claims do not meet the requirements of Articles 24 and 25, respectively;

III - the subject matter of the patent extends beyond the contents of the application as originally filed; or

IV - any of the formalities essential for grant were omitted during prosecution.

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 of 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:

I - assignment, stating full particulars of the assignee;

II - any limitation or condition placed on the application or patent; and

III - the changes to the name, headquarters or address of the applicant or the owner.

Article 60 - With regard to third parties, entries shall have effect as from the date of their publication.

CHAPTER VIII- LICENSES

SECTION I - VOLUNTARY LICENSES

Article 61 - A patent owner or applicant may conclude a licensing contract for exploitation.

Sole Paragraph - The patent owner may afford to 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 with 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 the 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 - A patent shall be subject to compulsory licensing if the owner 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:

I - failure to exploit the object of the patent within the Brazilian territory for failure to manufacture the product or failure to fully use a patented process, except in case of economic unfeasibility, in which case importing shall be admitted; or

II - marketing that does not satisfy the needs of the market.

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 Article 74, shall be secured to a licensee who proposes to manufacture locally, 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 importation to exploit a patent or importation 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:

I - justifies failure to use for legitimate reasons;

II - proves that serious and effective preparations for exploitation have been made; or

III - justifies the failure to manufacture or to market on grounds of legal obstacles.

Article 70 - A compulsory license may also be granted where the following circumstances are shown to apply in conjunction:

I - there exists a situation of dependency of one patent on another;

II - the subject matter of the dependent patent constitutes a substantial technical progress in relation to the earlier patent; and

III - the owner fails to reach agreement with the owner of the dependent patent on the exploitation of the earlier patent.

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 an earlier 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 a 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 of 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 of 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 - A patent application 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 - The 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 the 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:

I - on expiry of the term of protection;

II - on renunciation by the patent owner, without prejudice to the rights of other parties;

III - on forfeiture;

IV - on failure to pay the annual fee, within the time limits set forth in Article 84, paragraph 2, and Article 87; and

V - on failure to comply with provisions of Article 217.

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 - A 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 - A 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 patent owner 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 the 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 of 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 AND 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 refers shall be limited to the 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, 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 of the design 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 design 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 design 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 a patent application 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 was 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:

I - it is contrary to morality and decency or if it offends the honor or image of persons, threatens the freedom of conscience, belief, religious cults or ideas and feelings deserving respect and veneration;

II - it is the necessary common or ordinary shape of the object or yet, a shape that is essentially determined by technical or functional considerations.

CHAPTER III - APPLICATIONS FOR REGISTRATION

SECTION I - FILING OF APPLICATIONS

Article 101 - An application for registration shall contain, in compliance with INPI provisions:

I - request;

II - description, where applicable;

III - claims, where appropriate;

IV - drawings or photographs;

V - the field of application of the object; and

VI - proof of payment of the filing fee.

Sole Paragraph - The documents comprised in an application for registration shall be filed in Portuguese language.

Article 102 - - On submission, an application shall be subjected 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 art.

Article 105 - Where secrecy is requested under paragraph 1 of Article 106, the application may be withdrawn within a period of up to 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 the provisions of Article 100 are not complied with, the application for registration shall be rejected.

CHAPTER IV - GRANT AND TERM OF REGISTRATION

Article 107 - The certificate shall contain the number and title, name of the author in accordance with provisions of Paragraph 4 of Article 6, the name, the nationality and the domicile of the owner, the term, drawings, and data relating to foreign priority, and, where applicable, the description and claims.

Article 108 - - Registrations shall have a term of 10 (ten) years as from the date of filing and this term shall be renewable for 3 (three) successive 5 (five) year periods.

Paragraph 1 - Applications for renewal shall be made during the last year of the term of the registration and shall be accompanied by proof of payment of the corresponding fee.

Paragraph 2 - If renewal has not been applied for before the end of the term of registration, the owner may request renewal within the following 180 (one hundred and eighty) days, on payment of an additional fee.

CHAPTER V - PROTECTION CONFERRED BY REGISTRATION

Article 109 - - Ownership of an industrial design shall be acquired by means of a valid registration.

Sole Paragraph - The provisions of Article 42 and paragraphs 1, 2 and 4 of Article 43 shall apply mutatis mutandis to an industrial design registration.

 

Article 110 - Any person who, in good faith, prior to the date of the filing or priority date of an application for registration used to exploit the subject matter in the Country shall be entitled to continue exploitation in the previous manner and under the previous conditions without liability.

Paragraph 1 - The entitlement under this Article may only be assigned, by transfer or lease, together with the business or enterprise, or the part thereof, directly related to the exploitation of the subject matter of the registration.

Paragraph 2 - The entitlement under this Article shall not be afforded to a person who gained knowledge of the subject matter of the registration as a result of the disclosure under paragraph 3 of Article 96, provided the applications has been filed within 6 (six) months of disclosure.

CHAPTER VI - SUBSTANTIVE EXAMINATION

Article 111 - The owner of an industrial design may at any time during the term of the registration request examination as to novelty and originality of the subject matter of the registration.

Sole paragraph - INPI shall issue a substantive opinion which, if it is found out that at least one of the requirements referred to Articles 95 to 98 is not met, shall serve as basis for the institution of ex officio proceedings for nullity of the registration.

SECTION I - GENERAL PROVISIONS

Article 112 - A registration shall be deemed null and void if granted contrary to the provisions of this Law.

Paragraph 1 - Nullity of the registration shall take effect as from the filing date of the application.

Paragraph 2 - Where the provisions of Article 94 have not been complied with, the author may also claim ownership of the registration.

SECTION II - ADMINISTRATIVE PROCEDURE FOR NULLITY

Article 113 - Nullity of a registration shall be declared administratively if it has been granted contrary to the provisions of Articles 94 to 98.

Paragraph 1 - Nullity proceedings may be instituted ex officio or at the request of any person having a legitimate interest, within 5 (five) years as from the date of grant of the registration, without prejudice of the case referred to in the Sole paragraph of Article 111.

Paragraph 2 - Institution of proceedings on request or ex officio shall suspend the effects of the grant of the registration if submitted or published within 60 days from the grant.

 

Article 114 - The owner of the registration shall be invited to submit his comments within 60 (sixty) days as from the date of publication.

 

Article 115 - - Whether comments are submitted or not, INPI shall issue an opinion after the period laid down in the preceding Article and shall require the owner and the applicant to reply within 60 (sixty) days.

 

Article 116 - On expiry of the period referred to in the preceding Article, the matter shall be decided by the President of INPI, even if no comments were submitted, and the administrative procedure shall thereby be closed.

Article 117 – Nullity proceedings shall continue even if the registration has lapsed.

SECTION III - PROCEEDINGS FOR NULLITY

Article 118 - The provisions of Articles 56 and 57 shall apply mutatis mutandis to proceedings for nullity of an industrial design registration.

CHAPTER VIII - LAPSE OF THE REGISTRATION

Article 119 - A registration shall lapse:

I - on expiry of the term of protection;

II - on renunciation by the owner, without prejudice to the rights of third parties;

III - on failure to pay the fee referred to in Articles 108 and 120; or

IV - on failure to comply with provisions of Article 217.

CHAPTER IX - FIVE-YEAR FEE

Article 120 - The owner of a registration shall be required to pay a five-year fee as from the second five year period after the filing date.

Paragraph 1 - Payment of the second five-year period shall be made during the fifth year of the term of registration.

Paragraph 2 - Payment of the following five-year periods shall be made at the time of the submission of the application for renewal referred to in Article 108.

Paragraph 3 - Payment of five-year fees may also be made subsequently within 6 (six) months following the period laid down in the preceding paragraph, on payment of an additional fee.

CHAPTER X - FINAL PROVISIONS

Article 121 - The provisions of Articles 58 to 63 shall apply mutatis mutandis to the subject matter covered by this Title; the rights of an employee and of service providers shall be governed by the provisions of Articles 88 to 93.

TITLE III - MARKS

CHAPTER I - REGISTRABILITY

SECTION I - SIGNS REGISTRABLE AS MARKS

Article 122 - Any distinctive visually perceivable signs, if not prohibited by law, shall be eligible for registration as a mark.

 

Article 123 - For the purposes of this Law the following definitions shall apply:

I - product or service mark: a mark used to distinguish a product or service from an identical, similar or related product or service of different origin;

II - certification mark: a mark used to attest that a product or service complies with established standards or specifications, particularly regarding its quality, nature, material used and methodology employed; and

III - collective mark: mark used to identify goods or services produced by members of a certain entity.

SECTION II - SIGNS NOT REGISTRABLE AS MARKS

Article 124 - The following shall not be registrable as marks:

I - coats of arms, armorial bearings, medals, flags, emblems, badges and official, public, national, foreign or international monuments as well as any designations, figures or imitations thereof;

II - an individual letter, number and date, isolatedly, except when sufficiently distinctive;

III - expressions, figures, drawings or any other sign contrary to morality and decency or which offend the honor or image of a person or which offend freedom of conscience, belief, religious cult or ideas and feelings worthy of respect and veneration;

IV - designations or initials of public entities or agencies, where registration is not required by the public entity or agency;

V - reproductions or imitations of a characteristic or differentiating element in the title of an establishment or a name of an enterprise belonging to another party, likely to mislead or cause confusion with such distinctive signs;

VI - signs of a generic, necessary, common, ordinary or simply descriptive nature when related to the product or service to be distinguished, or those commonly used to designate a characteristic of a product of service regarding its nature, nationality, weight, value, quality and time of production or providing of a service, except where presented in a sufficiently distinctive form;

VII - signs or expressions used merely as a means of advertising;

VIII - colors and the names thereof, except where arranged or combined in an unusual and distinctive way;

IX - geographical indications, or imitations of such indications likely to mislead or signs that might wrongly suggest a geographical indication;

X - signs inducing false indication regarding the origin, source, nature, quality or usefulness of the product or service to which the mark is applied;

XI - reproductions or imitations of official seals normally used to guarantee a standard of any type or nature;

XII - reproductions or imitations of signs registered as a collective or certification marks by another party, without prejudice of provisions of Article 154;

XIII - names, prizes or symbols of official or officially recognized sporting, artistic, cultural, social, political, economic or technical events or imitations likely to cause confusion, except when authorized by the competent authority or entity promoting the event;

XIV - reproductions or imitations of titles, bonds, coins or bank notes of the Union, States, the Federal District, the Territories, the Municipalities or of any country;

XV - personal names or signatures, family names and surnames and images of third parties, except with the express consent of the title holder, his heirs or successors;

XVI - well known pseudonyms or nicknames and singular or collective artistic names, except with the consent of the owner, his heirs or his successors in title;

XVII - literary, artistic or scientific work, as well as titles protected by copyrights and likely to mislead or cause confusion, except with the consent of the author or owner;

XVIII - technical terms used in the industry, science and art, related to the product or service to be distinguished;

XIX - reproductions or imitations, in whole or in part, even with additions, of a mark registered by another party, to distinguish or certify a product or service which is identical or similar or related which are likely to cause confusion or association with another person’s mark;

XX - duplication of marks of one and same owner for the same product or service, except where, in the case of marks of the same nature, they are presented in a sufficiently distinctive manner;

XXI - the necessary, common or usual shape of a product or packaging, or also, shapes form that cannot be dissociated from a technical effect;

XXII - objects that are protected by industrial design registration owned by third parties; and

XXIII - signs that imitate or reproduce, in the whole or in part, a mark which the applicant could not fail to have knowledge of in view of his activities and of which the owner is established or domiciled on the national territory or in a country with which Brazil has an agreement or affords reciprocal treatment, if the mark is intended to distinguish a product or service that is identical, similar or related, likely to cause confusion or association with the mark of such other person.

SECTION III - FAMOUS MARKS

Article 125 - Marks registered in Brazil and deemed to be famous shall be afforded special protection in all fields of activity.

SECTION IV - WELL-KNOWN MARKS

Article 126 - - Marks that are well-known in their fields of activity pursuant to Article 6 bis (1) of the Paris Convention for the Protection of Industrial Property shall enjoy special protection, whether or not they have been previously filed or registered in Brazil.

Paragraph 1 - The protection afforded by this Article shall apply also to service marks.

Paragraph 2 - INPI may reject ex officio an application for registration of a mark that wholly or partially reproduces or imitates a well known mark.

CHAPTER II - PRIORITY

Article 127 - A priority right shall be afforded to an application for the registration of a mark filed in a country with which Brazil has signed an agreement or with an international organization, that produces the effect of a national filing, within the time limits laid down in such agreement, the filing shall not be invalidated or prejudiced by events that occur within such periods of time.

Paragraph 1 - The claim to priority shall be made at the time of filing and may be supplemented within 60 (sixty) days, by other priorities that precede the filing date in Brazil.

Paragraph 2 - A claim to priority shall be supported by means of a suitable document of origin containing the number, date and reproduction of the application or of the registration, accompanied by a simple translation of which the contents shall be at the full responsibility of the applicant.

Paragraph 3 - If not provided at the time of filing, proof shall be made within 4 (four) months, as of the date of the filing, under penalty of loss of the priority.

Paragraph 4 - Where priority is obtained under an assignment, the relevant document shall be submitted together with the actual priority document.

CHAPTER III - APPLICANTS FOR REGISTRATION

Article 128 - Public law or private law natural or legal persons may apply for the registration of a mark.

Paragraph 1- Private law persons may apply only for registration of a mark relating to the activity they effectively and lawfully exercise, either directly or through enterprises they directly or indirectly control, and shall state such fact on the actual request, subject to the penalties of the law.

Paragraph 2 - The registration of a collective mark may only be applied for by a legal person representing a group and this legal person may exercise an activity different from that of its members.

Paragraph 3 - The registration of a certification mark shall only be applied for by a person with no direct commercial or industrial interest in the certified product or service.

Paragraph 4 - A priority claim shall not exempt the application from the application of the provisions of this Title.

CHAPTER IV - RIGHTS IN MARKS

SECTION I - ACQUISITION

Article 129 - Ownership of a mark shall be acquired by a valid registration pursuant to the provisions of this Law; the owner shall have exclusive use of the mark throughout the national territory, without prejudice of the provisions of Articles 147 and 148 with respect to collective and certification marks.

Paragraph 1 - Any person who, in good faith, at the date of priority or a the date of the application, has been using an identical or similar mark for at least 6 (six) months in the Country to distinguish or certify an identical, similar or related product or service, shall have preferential rights to registration.

Paragraph 2 - Preferential rights shall only be assigned, by sale or lease, together with the business of an enterprise, or the part thereof that is directly related to the use of the mark.

SECTION II - PROTECTION AFFORDED BY THE REGISTRATION

Article 130 - The owner of a mark or the applicant shall also enjoy the right to:

I - assign his registration or application for registration;

II - license its use;

III - ensure its material integrity or reputation.

Article 131 - The protection afforded by this Law includes the use of the mark on papers, printed matter, in advertising and in documents related to the activities of the owner.

Article 132 - The owner of a mark shall not:

I - prevent traders or distributors from using their own distinctive signs, together with the mark of the product, for the purposes of promotion and marketing;

II - prevent manufacturers of accessories from using the mark to indicate the use of the product, provided they comply with the principles of fair competition;

III - prevent free circulation of products placed on the internal market, by the owner or with his consent, without prejudice of the provisions of paragraphs 3 and 4 of Article 68; and

IV - prevent a mention to the mark in speeches, scientific or literary works or in any other publication, provided it is done without any commercial connotation and in no way prejudices its distinctive character.

CHAPTER V - TERM, ASSIGNMENT AND ENTRIES

SECTION I - TERM

Article 133 - The registration of a mark shall have a term of 10 (ten) years, as from the date of grant, and may be renewable for successive and similar periods.

Paragraph 1 - An application for renewal shall be filed during the last year of the term of registration and shall be accompanied by proof of payment of the respective fee.

Paragraph 2 - If no request for renewal has been made by the end of the term of registration, the owner may request renewal within the following 6 (six) months, on payment of an additional fee.

Paragraph 3 - Renewal shall not be granted if provisions of Article 128 are not complied with.

SECTION II - ASSIGNMENT

Article 134 - Applications for registration and registrations may be assigned provided that the assignee meets the statutory requirements for requesting such registration.

Article 135 - An assignment shall include all registrations or applications, in the name of the assignee for identical or similar marks, related to an identical, similar or related product or service, under penalty of having the registrations canceled or withdrawal of applications not assigned.

SECTION III - ENTRIES

Article 136 - INPI shall make the following entries:

I - of the assignment, giving the full particulars of the assignee;

II - of any limitation or burden on the application or registration; and

III - of changes in the name, headquarters or address of the applicant or the owner.

Article 137 - Entries shall take effect with respect to other persons on the date of their publication.

Article 138 - An appeal may be lodged against any decision which:

I - rejects the entry of an assignment; or

II - cancels the registration or refuses an application, according to the provisions of Article 135.

SECTION IV - LICENSE OF USE

Article 139 - The owner of a registration or an applicant for registration may enter into a licensing contract for the use of the mark, without prejudice to his rights to exercise effective control over the specification, nature and quality of the respective products and services.

Sole Paragraph - The owner may afford the licensee full powers to take action to defend the mark, without prejudice of his own rights.

Article 140 - To have effect with respect to other persons, licensing contracts shall be recorded with INPI.

Paragraph 1 - Recordings shall have effect with respect to other persons as from the date of their publication.

Paragraph 2 - In order to give proof of use, recording licensing contract with INPI is not mandatory.

Article 141 - Appeals may be lodged against any decision rejecting the recording of a licensing agreement.

CHAPTER VI - LOSS OF RIGHTS

Article 142 - The registration of a mark shall lapse:

I - on expiry of the term of protection;

II - on renunciation, either in full or partial, of the products or services to which the mark applies;

III - on forfeiture; or

IV - on failure to comply with the provisions of Article 217.

Article 143 - A registration shall be forfeited, at the request of any person having a legitimate interest, if after 5 (five) years from grant, on the date of the request:

I - the use of the mark in Brazil has not begun; or

II - the use of the mark has been interrupted for more than 5 (five) consecutive years, or if, within the same period, the mark has been used in a modified form that involves alteration of its original distinctive character in accordance with the registration certificate.

Paragraph 1 - A mark shall not be forfeited if the owner gives legitimate reasons for failure to use.

Paragraph 2 - The owner shall be invited to submit his comments within a period of 60 (sixty) days, and shall prove that the mark has been used or justify failure to use for legitimate reasons.

Article 144 - The use of the mark shall comprise the products or services referred to in the certificate, under penalty of partial forfeiture of the registration with respect to these products or services which are not similar or related to those in respect of which the use of the mark has been proven.

Article 145 - Requests for forfeiture shall not be admitted if the use of the mark has been proven or if failure to use has been duly justified in an earlier proceeding requested less than 5 (five) years previously.

Article 146 - Appeals may be lodged against decisions which declare or deny forfeiture.

CHAPTER VII - COLLECTIVE AND CERTIFICATION MARKS

Article 147 - Applications for the registration of a collective mark shall include the regulations for its ,use establishing conditions and prohibitions regarding the use of the mark.

Sole Paragraph - If the regulations for use do not accompany the application, these regulations shall be filed within 60 (sixty) days from the date of filing, under penalty of having the application deemed definitively withdrawn.

Article 148 - Applications for registration of a certification mark shall contain:

I - the characteristics of the product or service to be certified; and

II - control measures to be adopted by the owner.

Sole Paragraph - If the documents referred to in items I and II of this Article do not accompany the application, these documents shall be filed within 60 (sixty) days, under penalty of having the application deemed definitively withdrawn.

 

Article 149 - Any changes in the regulations of use shall be notified to INPI, by means of a duly filed request, stating the provisions that have been changed, under penalty of having changes disregarded.

 

Article 150 - The use of the mark shall not be dependent on a license as it shall be sufficient to have authorization for use included in the regulations for use.

 

Article 151 - In addition to the grounds for lapse referred to in Article 142, the registration of collective marks and certification marks shall lapse if:

I - the entity ceases to exist; or

II - the mark is used under conditions that differ from those laid down in the regulations for use.

Article 152 - Renunciation to the registration of a collective mark shall only be accepted if requested in accordance with the articles of association or statutes of the entity or yet according to the regulations of use.

Article 153 - A registration shall be declared forfeited if the collective mark is not used by more than one authorized person, without prejudice of the provisions of Articles 143 to 146.

Article 154 - Collective or certification marks which have already been used and of which the registrations have lapsed may not be registered in the name of another party before five (5) year have elapsed as from the lapse of the registration has expired.

CHAPTER VIII - FILING

Article 155 - Applications shall refer to a single distinctive sign and, according to the conditions established by INPI, shall contain:

I - request;

II - labels, where appropriate; and

III - proof of payment of the filing fee.

Sole Paragraph - The request and any other documents accompanying the request shall be filed in Portuguese language and any document filed in a foreign language shall have an uncertified translation submitted at the time the application is filed or within the following 60 (sixty) days, under penalty of the document not being taken into consideration.

Article 156 - Once the application has been filed it shall be subjected to a formal preliminary examination, and if found in order, the application shall be recorded and the date of submission shall be considered the filing date.

Article 157 - Applications that do not comply with formal requirements of Article 155, but which contain sufficient data on the applicant, the sign of the mark and the class, may be filed with INPI in return for a dated receipt and INPI shall establish the conditions to be complied with by the applicant within 5 (five) days, under penalty of not being taken into consideration.

Sole Paragraph - Once the conditions have been complied with, the filing shall be considered to have been made on the date the application was submitted.

CHAPTER IX - EXAMINATION

Article 158 - Once recorded, the application shall be published to enable oppositions to be filed within a period of 60 (sixty ) days.

Paragraph 1 - The applicant shall be notified of any opposition and shall be invited to submit his comments within 60 (sixty) days.

Paragraph 2 - Oppositions, administrative procedure for nullity or nullity proceedings based on provisions of item XXIII of Articles 124 or 126 shall not be admitted unless proof of the filing of an application for registration of the mark in accordance with this Law is provided within 60 days of filing if the opposition, nullity procedure or nullity proceedings.

Article 159 - On expiry of the opposition period, or if opposition has been lodged, on expiry of the period for submitting comments, the examination shall be carried out during which conditions may be formulated which shall be complied with within 60 (sixty) days.

Paragraph 1 - If no answer is received to the conditions the application shall be deemed definitively withdrawn.

Paragraph 2 - Once the answer to the condition is filed, even if the condition has not been met, or if its formulation has been contested the examination shall be continued.

Article 160 - On completion of the examination a decision shall be issued allowing or rejecting the application for registration.

CHAPTER X - ISSUE OF REGISTRATION CERTIFICATES

Article 161 - A registration certificate shall be issued once the application has been allowed and proof is made of payment of the corresponding fees.

Article 162 - The payment of fees and proof of payment with respect to the issue of the registration certificate and to the first 10 years of protection shall be effected within 60 (sixty) days as from the date of the decision to allow.

Sole Paragraph - The fees may also be paid and proven within 30 (thirty) days following the period referred to in this Article, independent from notification,on payment of a specific fee, under penalty of the application being deemed definitively withdrawn.

Article 163 - A registration certificate shall be deemed to have been issued on the date of the publication of the corresponding decision.

Article 164 - The certificate shall mention the mark, number and date of registration, owner name, nationality and domicile, the products or services, registration characteristics and the foreign priority.

CHAPTER XI - NULLITY OF REGISTRATIONS

SECTION I - GENERAL PROVISIONS

Article 165 - A registration granted contrary to the provisions of this Law shall be null and void.

Sole Paragraph - Nullity of the registration may be total or partial, and a condition for partial nullity shall be the fact that the remaining part is registrable.

Article 166 - The owner of a mark registered in a country that is a signatory of the Paris Convention for the Protection of Industrial Property may, alternatively, institute legal proceedings to claim the ownership of the registration, in accordance with provisions of article 6septies (1) of that Convention.

Article 167 - A declaration of nullity shall produce effect as from the filing date.

SECTION II - ADMINISTRATIVE PROCEDURE FOR NULLITY

Art 168 - Nullity of the registration shall be declared administratively if the registration has been granted contrary to the provisions of this Law.

Art 169 - A nullity procedure may be instituted ex officio or at the request of any person with a legitimate interest within a period of 180 (one hundred and eighty) days as from the date of issue of the registration certificate of registration.

Article 170 - The owner shall be invited to submit his comments within a period of 60 (sixty) days.

Article 171 - After the period of time referred to in the preceding Article, even if no comments have been submitted, proceedings shall be decided by the President of INPI, and the administrative procedure shall be closed.

Article 172 - Nullity proceedings shall continue even if the registration has lapsed.

SECTION III - NULLITY PROCEEDINGS

Article 173 - Nullity proceedings may be instituted by INPI or by any person having a legitimate interest.

Sole Paragraph - During the course of the proceedings the judge may grant an injunction suspending the effects of the registration and the use of the mark, provided that the relevant procedural requirements are complied with.

Article 174 - Proceedings to declare the nullity of a registration shall prescribe within a period of 5 (five) years from the date of registration.

Article 175 - Nullity proceedings shall be filed before the Federal Courts and in those cases in which INPI is not the plaintiff INPI shall participate in the proceedings.

Paragraph 1 - Where the defendant is the registered owner he shall be given a period of 60 (sixty) days to submit his comments.

Paragraph 2 - When the decision on nullity proceedings becomes final, INPI shall publish a notification to inform other parties.


TITLE IV - GEOGRAPHICAL INDICATIONS

Article 176 - A geographical indication shall be an indication of source or appellation of origin.

Article 177 - Indication of source shall mean the geographic name of a country, city, region or locality in its territory, which has become known as the center of extraction, production or manufacture of a given product or of the provision of a given service.

Article 178 - Appellation of origin shall be the geographical name of country, city, region or locality in its territory, used to designate a product or service of which the qualities or characteristics are exclusively or essentially due to the geographical environment, including natural and human factors.

Article 179 - Protection shall extend to the graphical or figurative representation of a geographical indication, as well as the geographic representation of the country, city, region or locality of which the name is a geographical indication.

Article 180 - Where the geographical name has entered into everyday use designating a given product or service, it shall not be deemed a geographical indication.

Article 181 - A geographical name that is not an indication of source or appellation of origin may be used as a characteristic element of a product or service mark provided it does not suggest a false source.

Article 182 - The use of a geographical indication shall be reserved for the producers and service renderers established in that locality and, regarding denominations of origin, quality requirements shall also be complied with.

Sole Paragraph - INPI shall establish the conditions for registration of geographic indications.

 

TITLE V - INFRINGEMENT OF INDUSTRIAL PROPERTY

CHAPTER I - INFRINGEMENT OF PATENTS

Article 183 - An infringement of a patent of invention or utility model is committed by any person who:

I- manufactures a product which is the subject matter of a patent of invention or utility model without the authorization of the owner of the patent; or

II - uses a means or a process that is the subject matter of a patent of invention, without the authorization of the owner of the patent.

Penalty - imprisonment from three months to one year or a fine.

Article 184 - An infringement of patent of invention or utility model is committed by any person who:

I - exports, sells, exhibits or offers for sale, holds in stock, conceals or receives with a view to use for a commercial purposes, a product manufactured in infringement of a patent of invention or utility model, or that is obtained by patented means or process; or

II - imports a product that is the subject matter of a patent of invention or utility model or which is obtained by a means or process patented in the Country, for the purposes referred to in the preceding item, and that has not been placed on the external market directly by the owner of the patent or with his consent.

Penalty - imprisonment from 1 (one) to 3 (three) months, or a fine.

Article 185 - Supplying a component of a patented product, or material or equipment for carrying out a patented process, where the end use of the component, material or equipment, necessarily, implies exploitation of the subject matter of the patent.

Penalty - imprisonment, from 1 (one) to 3 (three) months, or a fine.

Article 186 - The acts referred to in this chapter shall also constitute infringement even if they do not affect all claims under the patent or if they are limited to the use of means equivalent to the subject matter of the patent.

CHAPTER II - INFRINGEMENT OF INDUSTRIAL DESIGNS

Article 187 - Manufacturing, without authorization of the owner, a product that incorporates a registered industrial design, or a substantial imitation thereof that is likely to mislead or cause confusion.

Penalty - imprisonment, from 3 (three) months to 1 (one) year, or a fine.

Article 188 - Any person who:

I - exports sells exhibits or offers for sale, holds in stock, conceals or receives with a view to use for commercial purposes, an object that unlawfully incorporates a registered industrial design or a substantial imitation thereof that is likely to mislead or cause confusion; or

II - imports a product that incorporates an industrial design registered in the Country, or a substantial imitation thereof that may mislead or lead to confusion for the purposes referred to in the preceding item, and which still has not been placed on the external market directly by the owner or with the owner consent, shall commit an infringement of the registered industrial design.

Penalty - imprisonment, from 1 (one) to 3 (three) months, or a fine.

CHAPTER III - INFRINGEMENT OF MARKS

Article 189 - An infringement of a registered mark is committed by any person who:

I - reproduces, in whole or in part a registered mark, without the authorization of the owner, or imitates it in a manner that may cause confusion; or

II - alters the registered mark of another person already affixed to a product that has been placed on the market.

Penalty - imprisonment from 3 (three) months to 1 (one) year, or a fine.

Article 190 - An infringement of a registered mark is committed by any person who imports, exports, sells, offers or exhibits for sale, conceals or keeps in stock:

I- a product bearing a mark of another person which is unlawfully reproduced or imitated, in whole or in part; or

II - a product of his industry or commerce, held in a vessel, container or packaging bearing the legitimate mark of another person.

Penalty - imprisonment, from 1(one) to 3 (three) months, or a fine.

CHAPTER IV - INFRINGEMENTS COMMITTED BY MEANS OF MARKS, TITLES OF ESTABLISHMENTS AND ADVERTISING SIGNS

Article 191- Reproducing or imitating, in whole or in part, in a manner that may mislead or cause confusion, armorial bearings, crests or official public distinctions, whether national, foreign or international, without the required authorization, in a mark, title of establishment, commercial name, insignia or advertising sign, or using such reproductions or imitations for commercial purposes.

Penalty - imprisonment, from 1 (one) to 3 (three) months, or a fine.

Sole Paragraph - Any person who sells or exhibits or offers for sale products branded with such marks shall be liable to the same penalty.

CHAPTER V - INFRINGEMENT OF GEOGRAPHICAL INDICATIONS AND OTHER INDICATIONS

Article 192 - Manufacturing, importing, exporting, selling, exhibiting or offering for sale or having in stock a product that bears a false geographical indication

Penalty - imprisonment from 1 (one) to 3 (three) months, or a fine.

Article 193 - Using on a product, container, case, tape, label, invoice, circular letter or poster, on any other means of disclosure or advertising, indicative terms such as "type", "species", "kind", "system", "similar", "substitute", "identical" or the like, failing to clearly state the true origin of the product

Penalty - imprisonment from 1 (one) to 3 (three) months, or a fine.

Art 194 - Using a mark, commercial name, title of establishment, insignia, advertising expression or sign or any other form that suggests a source other than the true source, or selling or exhibiting for sale a product bearing such signs.

Penalty - from 1 (one) to 3 (three) months, or a fine.

CHAPTER VI - ACTS OF UNFAIR COMPETITION

Article 195 - An act of unfair competition is committed by any person who:

I - publishes, by any means, a false statement, detrimental to a competitor, aimed at obtaining an advantage;

II - provides or publishes false information with respect to a competitor with a view to obtaining an advantage;

III - uses fraudulent means to divert the customers of another party, for his own profit or another party’s profit;

IV - uses the advertising expression or sign of another person, or imitates it, in a manner liable to cause confusion between products or establishments;

V - makes undue use of another party commercial name, title of establishment or insignia or sells, exhibits, offers for sale or keeps in stock a product bearing these references;

VI - replaces on the product of another person the name or company name of such other person, without his consent, with his own name or company name;

VII - claims, as means of advertising to have received a prize or distinction that he has not actually been awarded;

VIII - sells or exhibits or offers for sale, in the container or packaging of another an adulterated or falsified product, or uses such container or packing to trade in a product of the same type, even if not adulterated or falsified, if such act does not constitute a more serious offense;

IX - gives or promises money or other consideration to an employee of a competitor in return for which such employee, failing his duties under his employment, procures him an advantage;

X - receives money or other consideration, or accepts a promise of payment or reward in return for procuring an advantage for a competitor, failing in his duties under his employment;

XI - discloses, exploits or uses, without previous consent, confidential knowledge, information or data which may be used in industry, commerce or service rendering, except where such confidential knowledge, information or data are in the public domain or are obvious to a person skilled in the art, to which he has had access due to a contractual or employment relationship, even after termination of the contract;

XII - discloses, exploits or uses, without previous consent, such knowledge or information referred to in the preceding item, obtained by illicit means or to which he has access by fraud;

XIII - sells, exhibits or offers for sale a product which he wrongly declares to be subject of a patent filed or granted or of a registered industrial design or who wrongfully states in a commercial announcement or paper that such product has been filed or patented, or registered;

XIV - divulges, exploits or uses without authorization, the results of tests or other undisclosed data the elaboration involves a considerable effort and which has been submitted to government entities as a condition for approving the marketing of products.

Penalty - imprisonment, from 3 (three) months to 1 (one) year, or a fine.

Paragraph 1 -The liability for the offenses referred to in items XI and XII of this Article shall also extend to the employer, partner or administrator of the enterprise.

Paragraph Second - The provisions of item XIV shall not apply to the disclosure of information by a government agency that is competent to authorize the marketing of a product, where necessary to protect the public.

CHAPTER VII - GENERAL PROVISIONS

Article 196 - The terms of imprisonment provided for in Chapters I, II and III under this Title shall be increased by between one third to half if:

I - the person is or was a representative, proxy, agent, partner or employee of the patent owner or also of his licensee; or

II - the altered, reproduced or imitated mark is famous, well known, or is a certification or collective mark.

Article 197 - The fines provided for under this Title shall range between a minimum of 10 (ten) and a maximum of 360 (three hundred sixty) daily-fines, in accordance with provisions of the Penal Code.

Sole Paragraph - The fines may be increased or reduced, by up to 10 (ten) times, taking into consideration the personal situation of the agent and the size of the advantage obtained, independently of the provisions contained in the preceding Article.

Article 198 - At the time of clearance, customs authorities may seize, ex officio or at the request of an interested party, any products bearing falsified, altered or imitated marks or a false indication of source.

Article 199 - Proceedings with respect to offenses referred to in this Title may be instituted on a private complaint with the exception of the offense under Article 191 with respect to which public criminal proceedings shall be instituted.

Article 200 - Criminal proceedings and preliminary measures of search and seizure, with respect to infringement of industrial property, shall be governed by the provisions of the Code of Criminal Procedure, with the modifications provided for in the articles of this Chapter.

Article 201 - During execution of a search and seizure measure relating to an infringement of a patent of which the subject matter is a process invention, the bailiff shall be accompanied by an expert who shall make a preliminary verification of the existence of the unlawful act to enable the court to order seizure of the products obtained by the infringer using the patented process.

Article 202 - In addition to the preliminary measures of search and seizure, the party concerned may request:

I - seizure of the falsified, altered or imitated mark where it is prepared or at the place where it is found, prior to use for criminal purposes; or

II - the destruction of the falsified mark affixed to volumes or products before distribution, even if this implies the destruction of the packaging or of the products themselves.

Article 203 - In the case of a lawfully constituted industrial or commercial establishment that operate in public, the preliminary measures shall be limited to inspection and seizure of the products as ordered by the judge; its lawful activity shall not be brought to a halt.

Article 204 - If a search and seizure order was requested in bad faith, for reasons of competition, simple caprice or gross error, the person who requested the measure shall be liable for losses and damages.

Article 205 - An allegation of nullity of a patent or a registration on which the proceedings are based may constitute a plea of defense in criminal proceedings. However, acquittal of the defendant shall not mean nullity of the patent or registration, which may only be claimed in competent proceedings.

Article 206 - If information that is of a confidential nature, whether an industrial or trade secret, is disclosed in the course of proceedings, the court shall decide whether the proceedings shall continue in camera; the other party shall be prohibited from using such information for other purposes.

Article 207 - Independently of the criminal proceedings, the injured party may institute civil proceedings as he considers necessary in accordance with the Code of Civil Procedure.

Article 208 - Compensation shall be determined on the basis of the benefit that the injured party would have obtained had the infringement not taken place.

Article 209 - The injured party shall be entitled to compensation and damages in respect to acts that infringe industrial property rights and acts of unfair competitions that are not specified in this Law, but which are liable to prejudice another's reputation or business or to lead to confusion between commercial and industrial establishments or service providers, or between products and services placed on the market.

Paragraph 1 - The judge may, in the records of the same proceedings, in order to avoid irreparable damage or damage difficult to recover, order an injunction to cease the infringement or act concerned, before summoning the defendant, subject, where deemed necessary, to bail or bail bond.

Paragraph 2 - In the case of flagrant reproduction or imitation of a registered mark, the judge may order the seizure of all merchandise, products, articles, packaging, labels or other objects bearing the falsified or imitated mark.

Article 210 - Loss of profits shall be determined by those of the following criteria that are most favorable to the injured party:

I - the benefits the injured party would have obtained if the infringement had not taken place;

II - the benefits received by the infringer; or

III - the remuneration the infringer would have paid to the owner of the infringed rights for a license that would have permitted the lawful exploitation of the subject matter of the rights.

TITLE VI - TRANSFER OF TECHNOLOGY AND FRANCHISING

Article 211 - INPI shall register the contracts that involve transfer of technology, franchising contracts and the like to enable them to have effect with respect to third parties.

Sole Paragraph - Decisions regarding the application for the recording of contracts of the type referred to in this Article shall be issued within 30 (thirty) days, as from the date of the application for recording.

TITLE VII - GENERAL PROVISIONS

CHAPTER I - APPEALS

Article 212 - Unless explicitly stipulated to the contrary appeals may be lodged against decisions referred to by this law within a period of 60 (sixty) days.

Paragraph 1 - Appeals shall have suspensive and full devolutive effect and all provisions concerning first instance hearing shall be applied, where applicable.

Paragraph 2 - No appeal may be lodged against a decision ordering the final refusal of an application for a patent or for a design registration or against a decision allowing an application for a patent, a certificate of addition or the registration of a mark.

Paragraph 3 - The President of INPI shall decide on the appeals, and the administrative procedure shall be closed.

Article 213 - The interested parties shall be invited to file counter-claims within a period of 60 (sixty) days.

Article 214 - In order to supplement the claims of the appeal INPI may formulate conditions that shall be complied with within a period of 60 (sixty) days.

Sole Paragraph - On expiry of the aforementioned period, a decision shall be taken on the appeal.

Article 215 - A decision on an appeal shall be final and there shall be no appeal from the administrative procedure.

CHAPTER II - ACTS OF THE PARTIES

Article 216 - The acts referred to in this Law shall be performed by the parties or their duly qualified attorneys.

Paragraph 1 - Powers of attorney in their original form, an official copy or a certified photocopy shall be drafted in Portuguese language; consular legalization or a certification issued by a Notary Public shall not be required.

Paragraph 2 - A power of attorney shall be filed within 60 (sixty) days as from the date of the first act by the party to the proceedings, independently from notification or requirement, under penalty of refusal, refusal of a patent application, and an application for registration of an industrial design or an application for registration of a mark shall be final.

Article 217 - A person domiciled abroad shall be required to have a standing qualified attorney domiciled in the Country, with powers to represent such person administratively or judicially and the attorney shall be empowered also to receive summons.

Article 218 - Petitions shall not be taken into consideration:

I - if submitted after the statutory deadline; or

II - if not accompanied by proof of payment of the corresponding fee applicable at the time of submission.

Article 219 - Petitions, oppositions and appeals shall not be taken into consideration if:

I - they are submitted after the period laid down by this Law;

II - they are not based on legal grounds; or

III - they are not accompanied by proof of payment of the corresponding fee.

Article 220 - Whenever possible, INPI shall take into account the acts of the parties and may impose any necessary conditions.

CHAPTER III - TIME LIMITS

Article 221 - The time limits laid down by this Law shall be continuous, and the right to perform an act shall automatically lapse on termination of the time limit unless the party concerned proves that the act was not performed for legitimate reasons.

Paragraph 1 - Legitimate reasons mean an unforeseeable event, beyond the control of the party concerned which has prevented the party from carrying out the act.

Paragraph 2 - Where legitimate reasons are admitted, the party concerned shall carry out the act within the period of time afforded by INPI.

Article 222 - To calculate the time limits, the first day shall be excluded and the last day shall be included.

Article 223 - Time limits shall begin to run only on the first working day after notification is made by publication in INPI official organ of communication.

Article 224 - If no express provision is made by this Law, the time limit for a party to perform an act shall be 60 (sixty) days.

CHAPTER IV - PRESCRIPTION

Article 225 - Proceedings for damages suffered by industrial property rights shall become prescribed after 5 (five) years.

CHAPTER V - DECISIONS OF INPI

Article 226 - The acts of INPI in administrative proceedings regarding industrial property shall take effect only after publication in the respective official organ of communication, except:

I - those which, under the provisions of this Law, expressly do not require notification or publication;

II - administrative decisions, where notification is made by mail or the interested party is informed thereof in the proceedings; and:

III - internal opinions and decisions of which notice to the parties is not required.

CHAPTER VI - CLASSIFICATIONS

Article 227 - Classifications relating to the subject matter of Titles I, II and III of this Law, shall be established by INPI, in those cases where they were not laid down by an international treaty or agreement in force in Brazil.

CHAPTER VII - FEES

Article 228 - Fees shall be charged for the services provided in accordance with the provisions of this Law; the amounts of such fees and the form of collection shall be established by a decision of the head of the federal public administration agency to which INPI reports.

TITLE VIII - TRANSITIONAL AND FINAL PROVISIONS

Article 229 - The provisions of this Law shall apply to all applications pending, except with regards to the patentability of substances, matter or products obtained by chemical means or processes and foodstuffs and chemical-pharmaceutical substances, matter, compounds or products, and medicines of any kind, as well as to the corresponding processes for obtaining or modifying them, which shall only be entitled to privileges in accordance with the provisions established in Articles 230 and 231.

Article 230 - An application for a patent may be filed with regard to substances, matter or products obtained by chemical means or processes and for foodstuffs and chemical-pharmaceutical substances, matter, compounds or products, and medicines of any kind, and the respective process for obtaining or modifying them by the person who holds protection afforded under a treaty or convention in force in Brazil, and with respect to which the date of the initial foreign filing is recognized, provided that its subject matter has still not been placed on any market, by a direct initiative of the owner or by another party with the consent of the owner, nor have serious and effective preparations for exploiting the subject matter of the application or patent been made in the Country by other parties.

Paragraph 1 - Applications shall be filed within a period of 1 (one) year as from the date of publication of this Law, and shall state the date of the initial application filed abroad.

Paragraph 2 - Patent applications filed in accordance with the provisions of this Article shall be automatically published, and the interested parties shall have the right to submit comments within a period of 90 (ninety) days, on whether the aforementioned conditions of this Article have been complied with.

Paragraph 3 - Once provisions of Articles 10 and 18 of this Law and the provisions of this Article have been complied with the grant of a patent in the country of first application has been proven, a patent shall be granted in Brazil in exactly the same terms as granted in the country of origin.

Paragraph 4 - A patent granted on the basis of this Article shall enjoy the remaining term of protection in the country of first application beginning with the date of filing in Brazil and limited to the term of protection laid down in Article 40, whereby the provisions of the sole Paragraph of that article shall not apply.

Paragraph 5 - An applicant who has filed an application that is pending with respect to substances, matter or products obtained by chemical means or processes and foodstuffs and chemical-pharmaceutical substances, matter, compounds, products and medicines of any kind, as well as the corresponding processes for obtaining or modifying them, may file a new application within the period of time and under the provisions of this Article, submitting proof of relinquishment of the pending application.

Paragraph 6 - The provisions of this Law shall apply where appropriate, to applications filed and to patents granted in accordance with the provisions of this Article.

Article 231 - A patent application may be filed for the subject matters referred to in the preceding Article by a national or a person domiciled in the Country and enjoy the date of the disclosure of the invention provided its subject matter has not been placed on any market, at the direct initiative of the owner or by another party with the consent of the owner and that no other parties have carried out in the Country serious and effective preparations for exploiting the subject matter of the application.

Paragraph 1 - The application shall be filed within a period of 1 (one) year as from publication of this Law.

Paragraph 2 - Patent applications filed in compliance with the provisions of this Article shall be prosecuted in accordance with the provisions of this Law.

Paragraph 3 - A patent granted on the basis of this Article shall enjoy the remaining term of protection of 20 (twenty) years from the date of disclosure of the invention as from the date of filing in Brazil.

Paragraph 4 - An applicant who holds a pending application for a patent relating to a subject matter to which the preceding Article refers may file a new application within the period of time and subject to the provisions of this Article on submitting proof of relinquishment of the pending application.

Article 232 - The production or use, in accordance with the provisions of the preceding legislation, of substances, matter or products obtained by chemical means or processes and foodstuffs and chemical-pharmaceutical substances, matter, compounds or products and medicines of any type, as well as the corresponding processes for obtaining or modifying them, even if protected by a product or process patent in another country in accordance with a treaty or convention in force in Brazil, may be pursued under the same conditions that existed prior to the approval of this Law.

Paragraph 1 - No retroactive or future claim of any value or on any grounds, shall be admitted with respect to products manufactured or processes used in Brazil in compliance with the provisions of this Article.

Paragraph 2 - Likewise, no claim as described in the preceding paragraph shall be admitted if, during the period prior to the entry of this Law into force, significant investment has been made for the exploitation of a product or of a process as referred to in this Article, even if protected by a product or process patent in another country.

Article 233 - Applications for the registration of advertising expressions and signs for declarations of notoriety shall be definitively refused and the registrations and declarations already granted shall remain in force for the remainder of their term, but may not be renewed.

Article 234 - Priority guarantees in accordance with Article 7 of Law no. 5.772 of December 21, 1971 shall be enjoyed by the applicants up to expiry of the current time limit.

Article 235 - Time limits granted under Law no. 5.772 of December 21,1971 shall be guaranteed.

Article 236 - Applications for industrial model and industrial design patents filed under Law no. 5.772 of December 21, 1971, shall be automatically designated applications for registration of industrial designs and for all legal purposes publications shall be deemed made.

Sole Paragraph - Payments made with respect to such adapted applications shall be taken into account for calculating due five-year fee.

Article 237 - The provisions of Article 111 shall not apply to applications for industrial model or industrial design patents that have been examined in accordance with the provisions of Law no. 5.772 of December 21, 1971.

Article 238 - Appeals filed under Law no. 5.772 of December 21, 1971 shall be decided in accordance with the provisions of that Law.

Article 239 - The Government is hereby authorized to carry out any changes within INPI required to ensure its financial and administrative autonomy; INPI shall be authorized to:

I - contract technical and administrative staff by way of public competition;

II - establish salary scales for its employees, subject to the approval of the Ministry to which INPI reports; and

III - propose a basic structure and internal regulations subject to the approval by the Ministry to which INPI reports.

Sole Paragraph - The expenditure resulting from the enforcement of the provisions of this Article shall be paid by INPI with own resources.

Article 240 - Article 2nd of Law no. 5.648 of December 11, 1970, shall be reworded as follows:

"Article 2nd - The principal task of INPI shall be to execute at national level the statutes that govern industrial property, taking into account its social, economic, juridical and technical functions, and to give its opinion on the advisability of signing, ratifying and terminating conventions, treaties, pacts and agreements relating to industrial property."

Article 241 - The Judiciary is hereby authorized to establish special courts to hear matters relating to industrial property.

Article 242 - The Government shall submit to the National Congress a draft law intended to promote, where necessary, the harmonization of this Law with the industrial property policy enforced by other countries that are members of the MERCOSUR.

Article 243 This Law shall be in force on the date of its publication, with respect to the matter contained in Articles 230, 231, 232 and 239 and, 1 (one) year after publication with respect to the remaining Articles.

Article 244 - Law no. 5.772 of December 21, 1971, Law no. 6.348 of July 7, 1976, Articles 187 to 196 of Decree-Law no. 2.848 of December 7, 1940, Articles 169 to 189 of Decree-Law no. 7.903 of August 27, 1945, and all other contrary provisions are hereby repealed.

PRELIMINARY PROVISIONS

Article 1 - This law regulates rights and obligations relating to industrial property.

Article 2 - In view of the interest of society and the technological and economic development of the country, the protection of rights relating to industrial property shall be assured by means of:
I - the grant of patents for inventions and for utility models;
II - the grant of industrial design registrations ;
III - the grant of trademark registrations;
IV - the repression of false geographical indications; and
V - the repression of unfair competition.

Article 3 - The provisions of this law shall apply to:
I - applications for patents or registrations originating abroad and filed in the country by a person holding protection under a treaty or convention in force in Brazil; and
II - nationals of or persons domiciled in a country that affords by way of reciprocity the same or equivalent rights to Brazilians or persons domiciled in Brazil.

Article 4 - The provisions of treaties in force in Brazil shall apply under the same conditions, to natural and legal persons who are nationals of or domiciled in Brazil.

Article 5 - For all legal effects, industrial property rights shall be deemed movable property.