Important changes in the process of annotation/registration of contracts with the BPTO

On December 30, 2022, the Brazilian Patent and Trademark Office (“BPTO”) published SEI INPI 0747049, which simplifies the procedure for annotation and registration of technology transfer agreements in Brazil. The BPTO accepted the suggestions and recommendations discussed with the Licensing Executive Society Brasil (LES Brasil) and the International Chamber of Commerce (ICC-Brasil). The changes are summarized below:

• Exclusion of the obligation for two witnesses when the agreement provides for a Brazilian city as the place of signature.
• Exemption from initialing all pages of the agreement and annexes.
• Waiver of e-notarization and e-apostille in case of digital signatures without an ICP-Brasil certificate, in agreements settled between international parties.
• Waiver of articles of incorporation of the Brazilian legal entity.
• Inclusion of the possibility to license non-patented technology (“know-how”).
• Consultation regarding the possibility to extend the definition of payment of trademark applications, for patents, industrial designs and other IP assets, when applicable.

This important change will enable larger investments to be carried out and facilitate the supply of technology in Brazil, consequently reducing obstacles to such activities significantly.

Demarest’s Intellectual Property, Innovation and Technology team is available to advise you on this matter and provide any further clarifications that may be necessary