Brazil is a member of all major intellectual property conventions, but piracy is common. Laws are tough, providing for criminal as well as civil penalties, but enforcement by authorities is sporadic and lax. Most matters relating to intellectual property registration are dealt with by the National Institute of Industrial Property (“INPI”). Specific rules apply to trademarks, patents, designs and models of invention, copyright, integrated circuits and plant breeds. Additionally, the protection of confidential information is available under general contract principles as well as under the Law of Intellectual Property. Finally, specific rules apply to contracts for the transfer of know-how and “technology” to Brazil.
Brazil adopts the priority principle as provided in the Paris Convention. The owner of a foreign trade mark has six months from the time of registration being obtained abroad to file for registration in Brazil to keep the priority filing date. Otherwise, the “first to file” rule controls: the first person to file the trade mark application will have priority for registration.
Royalties for trade mark use can only be charged once the trade mark is registered in Brazil. Trade mark registration is slow, yet in recent times registration has been successfully sped up and now can be obtained within a two to three year period. Protection is given to the trade mark for a period of 10 years, which can be subsequently extended for periods of 10 years, perpetually.
Patents, designs and models of invention
As with many countries, patent registration is not a simple process and a very time consuming task. This is especially true in Brazil: it is not unusual for the INPI to take more than a decade to register a patent. Processing times are quicker for designs and models of invention.
Brazil is a member of the Patent Cooperation Treaty so parties may choose to have applications filed pursuant to the Treaty via their respective national or regional patent offices or the international bureau. Priorities are also afforded to foreign applicants under the Paris Convention. Patent and design rights are protected pursuant to the Law of Intellectual Property.
Brazil is a member of the Berne Convention, so copyright does not require registration for protection. The Copyright Law provides protection for authors of literary, artistic and scientific works. Protection extends to dramatic and musical works as well as performance and broadcast rights. Although not required for the purposes of copyright ownership, the Copyright Law allows the authors of intellectual work to register it with the Brazilian National Library for the purposes of preservation and proving the date of creation of the work.
The Software Law provides specific protection to holders of copyright over software. The source code may be registered with the INPI, yet only in rare cases is registration recommended. Specific rules apply relating to limitation of liability and rights to make copies of the program.
Law 11,484/2007 grants intellectual property rights to developers of integrated circuits. Protection is given to Brazilian citizens and residents and to those who reside in countries that grant similar rights to Brazilians (under reciprocity principles). Registration is obtained at the INPI.
The Plant Breeding Protection Law grants certain specific rights to plant breeders that have developed a new breed or an “essentially derived breed”. Protection is provided to those who register the breed. The holder of the plant breed registration will have rights over reproduction and multiplication of the plant, among others.
Confidential information is protected under contract principles, including implied rules regarding good faith in dealings and contracts. Therefore, it is strongly advised that a non-disclosure agreement or confidentiality deed (as the case may be) be signed before any confidential information of value is released to any party in Brazil.
Under the Intellectual Property Law, employees are also bound by law to keep secrecy over a business’ confidential information.
“Know-how” and “technology transfer” agreements
The INPI must approve technology transfer agreements (which generally means agreements for the transfer of know-how), so that:
- it can be enforced against third parties;
- payments relating to the technology (such as royalties) can be sent to the foreign holder of the know-how rights; and
- royalty payments can be used as tax deductions by the Brazilian payor.
As part of the registration process, INPI will request details about:
- how the technology is being paid for;
- the reasons for which the technology is being transferred;
- what intellectual property rights are being transferred; and
- how the transfer is being effected or is proposed to be effected.
The general rule is that registration with INPI will be deemed to be effected 30 days after the application is filed, regardless of how long the registration actually takes to be effected. However, due to the various formalities (and the pedantic reviewing by the INPI) registration often takes longer than 30 days to be obtained.