Over the last years, the government began focusing its attention on creating a culture of innovation, and the growth of Intellectual Property in Brazil.
This led to many new initiatives across all powers of Brazilian government aiming to make the country more modern and competitive, e.g., ratifying important international treaties, defining new national strategies, regulations and legislation, public consultation processes, and changes to the courts and law enforcement areas.
Brazil is adapting and creating laws that deal with topics such as: data protection, the fight against cyber-crimes and the issues of the use of intellectual property on the Internet.
The government initiatives also include the new Intellectual Property National Strategy (ENPI) program (“Estratégia Nacional de Propriedade Intelectual -ENPI”), with the objective of creating a balanced and effective National IP system, to promote creativity, investments in innovation and access to knowledge in Brazil.
With this article, we intend to give a short and general overview of intellectual property in Brazil, as well as to provide some updates in respect of each area.
For more detailed analyses on these issues, as well as other areas (for instance, technology, privacy and data protection) we recommend that you visit our FAQ page on our website or contact us directly.
International Treaties
Brazil joined WIPO in 1975, and is a member of numerous WIPO administered treaties and bodies. The competent national office for intellectual property in Brazil is the National Institute of Intellectual Property (The Brazilian PTO), based in Rio de Janeiro (linked to the Ministry of Economy).
Brazil is a member of numerous treaties that affect to Intellectual property in Brazil.
The following treaties are referenced in this post:
• Paris Convention for the Protection of Industrial Property (Paris Convention)
• The Patent Cooperation Treaty (PCT)
• The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)
• Hague System for International Registration of industrial Designs (Hague System)
• Protocol Relating to the Madrid Agreement (Madrid Protocol)
• Berne Convention for the Protection of Literary and Artistic Works (Berne Convention)
• The Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity (The Nagoya Protocol)
Patents and industrial designs
Brazil is a member of the Patent Cooperation Treaty (PCT), which helps applicants to obtain patent protection for their inventions internationally. In addition, it assists patent offices in terms of making decisions on whether to grant such protection. As a result of filing an application under the PCT, applicants may seek protection in member countries around the world.
In terms of designs, it is worth noting that Brazil is not yet a member of the Hague System, meaning that applicants must apply directly to the Brazilian PTO to obtain protection. In contrast to the position in Europe, designs must be registered in order to qualify for protection.
The Brazilian Industrial Property Law (Law 9279 of 1996) governs both patents and designs.
Updates
• In 2019, the Brazilian PTO officially introduced its plan to solve Brazil’s patent backlog problem, aiming to reduce the backlog by at least 80% over a period of 2 years. The plan against patent backlog is showing promising results.
• The Brazilian PTO has launched several fast-track programs over the last years, which can dramatically reduce the time needed to obtain patent protection in Brazil.
• The Brazilian Supreme Court (STF) recently handed down a landmark constitutional decision on Brazilian Patents. The case challenged the legal provision establishing a minimum period of patent protection of 10 years counted from the date of grant. By a 9-2 majority, the Court decided that the challenged provision violates the Constitution.
• The Brazilian PTO has initiated a public consultation to revise its Patent Examination Guidelines for Software-Implemented Inventions. According to the Brazilian Patent Statute, computer programs by themselves are not considered patentable inventions. Because of the uncertainties caused by this provision, the Brazilian PTO issued the guidelines in 2016 to clarify what is eligible for patent protection within the software universe.
• The UK Government recently made an unprecedented decision to invest approx. R$20 million in the Brazilian PTO in order to improve the Brazilian patent system. The funds came from the Prosperity Fund – the British Government’s co-operation fund financed by the Foreign and Commonwealth Office.
• The Nagoya Protocol finally ratified in Brazil in 2021, ending a long legislative process and debates at various levels of government on the subject. The Nagoya Protocol is an international agreement that complements the Convention on Biological Diversity to address the genetic resources of biodiversity, and also the traditional knowledge associated with it.
Trademarks
In Brazil, Trademarks are governed by the Federal Constitution and regulated under the Brazilian Industrial Property law (Law 9279 of 1996).
In practice, this means that all visually perceptible distinctive signs, when not prohibited by law, are eligible for registration as a trademark, pursuant to Article 122 of the Brazilian Intellectual Property Law. As such, word, figurative, composite and 3D forms may be registered. However, the registration of “non-traditional” marks, such as sound marks, position marks, motion marks and scents, are not permitted in Brazil. In any event, to achieve registration, a trademark must fulfill the basic requirements of relative novelty, authenticity and distinctiveness.
In terms of procedure, Brazil adopts the “priority principle” (as provided for by the Paris Convention). Once an application has been filed, the Brazilian PTO will assign a serial number and perform a formality check. This consists of confirming that all the relevant information has been correctly provided by the applicant on the filing form (adequate representation of the trademark, priority number, attorney of record, declaration of activity and other documents that may have been submitted).
If the application meets the minimum filing requirements, it will be published for opposition purposes in three to four weeks from filing. Interested third parties will then have 60 days to raise objections and file oppositions (no extensions of time are allowed). If an opposition is filed, a notice will be published, and the applicant will have an inextensible 60-day term to submit a reply. The Brazilian PTO will only carry out the examination of the application (including reviews on both absolute and relative grounds) after the deadlines for opposition proceedings have expired.
Roughly 12 to 15 months from the filing of the application, the Brazilian PTO will publish its decision on the registrability of the trademark, either allowing or rejecting its registration. If an application is allowed, the applicant will have a 60-day term to pay the final issuance fees, whereas, if rejected, it will have the same term to file an appeal.
When granted following payment of the issuance fees, the registration will be published in the Official Gazette and the corresponding Certificate will be provided electronically by the BPTO within approximately two months.
It is not necessary to announce “intent to use” at any time.
Updates
• The Brazilian PTO recently took a much-needed step in its implementation of the Madrid Protocol at national level. The accession to the Protocol was important for Brazil’s plans to foster international business and brings with it numerous advantages, including the simplification of registering trademarks abroad, speeding up the process and registration time, and the possibility of unifying all the applications in one place.
Copyright
Brazil is a member of the Berne Convention. Therefore, copyright protection under Brazilian Law is inherent to the creation of the work and no registration is necessary for the enforcement of rights against third parties, provided that the legal conditions of protection are met (although such registration is possible with the Brazilian national Library).
Law no. 9,610/98 (the “Brazilian Copyright Law” or “BCL”) sets forth, in Article 7, that all creations of the spirit expressed by any means or affixed in any type of tangible or intangible support are protected as intellectual works.
From that legal definition and the doctrine developed on the subject, it is possible to draw two main conditions with which an intellectual work must comply to be entitled to protection in Brazil:
(1) The work must be externalized in some form, meaning that the work cannot be a simple idea; and
(2) The work must be original. The uncertainty around the definition of originality has led to different doctrinal approaches: on one hand, we find the objective approach where a work is considered original when it is novel; on the other hand, according to the subjective approach, an original work is a work that expresses the author’s individuality/personality.
Brazilian Courts have applied different thresholds according to the type of work, but it is safe to say the work must contain a minimum level of creativity to be protected in Brazil.
Updates
• It is possible for a computer program to be protected as copyright, as well as being part of an invention protected by a patent, if the industrial invention is implemented by software. In this case, the computer program itself would not be protected, but rather the invention itself. In light of this, The Brazilian PTO has initiated a public consultation to revise its Patent Examination Guidelines for Software-Implemented Inventions.
Transactions for intellectual property in Brazil
In order to safely transfer Intellectual Property in Brazil, certain rules must be followed. In particular, assignments and licensing of the following assets must be registered with the Brazilian PTO:
• Patents
• Industrial designs
• Trademarks
• Technical assistance and supply of technology (“know how”)
• Business franchises
Further information about the registration process can be accessed here.
Final remarks
For more detailed analyses on Intellectual Property in Brazil, as well as related areas (for instance, technology, privacy and data protection) we recommend that you visit our FAQ page.
Please do not hesitate to reach out to us should you require our assistance on a more specific matter.