LAW N° 9279
OF 14th MAY 1996
(published on 15th
of May 1996)
Regulating
rights and obligations relating to industrial property.
PRELIMINARY PROVISIONS
Article 1 - This law regulates rights and
obligations relating to industrial property.
Article 2 - The protection of rights relating
to industrial property, taking into account the interests of society and the
technological and economic development of the country, is effected by means of:
I - the grant of patents of invention and utility model patents;
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 also apply:
I - to an application for a patent or registration originating from
abroad and filed in this country by a person having protection guaranteed by a
treaty or convention in force in Brazil; and
II - to nationals or persons domiciled in a country that guarantees
reciprocity of identical or equivalent rights to Brazilians or persons
domiciled in Brazil.
Article 4 - The provisions of treaties in
force in Brazil, are applicable, in equal conditions, to natural and legal
persons that are nationals or domiciled in this country.
Article 5 - For all legal effects, industrial
property rights are considered to be chattels.
TITLE I
PATENTS
CHAPTER I
OWNERSHIP
Article 6 - The author of an invention or of
a utility model will be assured the right to obtain a patent that guarantees to
him the property, under the terms established by this law.
§ 1 - In the absence of proof to the contrary, the applicant is presumed
to have the right to obtain a patent.
§ 2 - A patent may be applied for
by the author, his heirs or successors, by the assignee or by whoever
the law or a work or service contract determines to be the owner.
§ 3 - When an invention or utility model is created jointly by two or
more persons, the patent may be applied for
by all or any one of them, by naming and qualifying the others to
guarantee their respective rights.
§ 4 - The author will be named and qualified, but may request his
authorship not to be divulged.
Article 7 - If two or more authors have
independently devised the same
invention or utility model, the right to obtain a patent will be assured to
whoever proves the earliest filing,
independently of the dates of invention or creation.
Sole Paragraph - The withdrawal of an earlier filing without producing any effects
will give priority to the first later filing.
CHAPTER II
PATENTABILITY
Section I
Patentable Inventions and Utility Models
Article 8 - To be patentable an invention
must meet the requirements of novelty, inventive activity and industrial
application.
Article 9 - An object of practical use, or
part thereof, is patentable as a utility model, when it is susceptible of
industrial application, presents a new shape or arrangement and involves an
inventive act that results in a functional improvement in its use or
manufacture.
Article 10 - The following are not considered
to be inventions or utility models:
I - discoveries, scientific theories and mathematical methods;
II - purely abstract concepts;
III - schemes, plans, principles or methods of a commercial, accounting,
financial, educational, publishing, lottery or fiscal nature;
IV - literary, architectural, artistic and scientific works or any
aesthetic creation;
V - computer programmes per se;
VI - the presentation of information;
VII - rules of games;
VIII - operating or surgical techniques and therapeutic or diagnostic
methods, for use on the human or animal body; and
IX - natural living beings, in whole or in part, and biological material, including the genome or germ plasm of
any natural living being, when found
in nature or isolated therefrom, and natural biological processes.
Article 11 - Inventions and utility models are
considered to be new when not included in the state of the art.
§ 1 - The state of the art comprises everything made accessible to the
public before the date of filing of a patent application, by written or oral
description, by use or any other means, in Brazil or abroad, without prejudice
to the provisions of articles 12, 16 and 17.
§ 2 - For the purpose of determining novelty, the whole contents of an
application filed in Brazil, but not yet published, will be considered as state
of the art from the date of filing, or from the priority claimed, provided that
it is published, even though subsequently.
§ 3 - The provisions of the previous paragraph will be applied to an international
patent application filed in accordance with a treaty or convention in force in
Brazil, provided that there is national processing.
Article 12 - The disclosure of an invention or
utility model which occurs during the twelve months preceding the date of
filing or priority of the patent application will not be considered as part of
the state of the art, provided such disclosure is made:
I - by the inventor;
II - by the National Institute of Industrial Property - INPI, by means
of the official publication of a patent application filed without the consent
of the inventor and based on information obtained from him or as a result of
his acts; or
III - by third parties, on the basis of information received directly or
indirectly from the inventor or as the result of his acts.
Sole Paragraph - INPI may require the inventor to provide a declaration relating to
the disclosure, accompanied or not by proof, under the conditions established
in the rules.
Article 13 - An invention shall be taken to
involve inventive activity when, for a person skilled in the art, it does not
derive in an evident or obvious manner from the state of the art.
Article 14 - A utility model shall be taken to
involve an inventive act when, for a person skilled in the art, it does not derive
in a common or usual manner from the state of the art.
Article 15 - Inventions and utility models are
considered to be susceptible of industrial application when they can be made or
used in any kind of industry.
Section II
Priority
Article 16 - Priority rights will be
guaranteed to a patent application filed in a country that maintains an
agreement with Brazil or in an international organisation, that produces the
effect of a national filing, within the time limits established in the
agreement, the filing not being invalidated nor prejudiced by facts that occur
within such time limits.
§ 1 - Priority claims must be made at the time of filing, but may be
supplemented within 60 (sixty) days by other priorities earlier than the date
of filing in Brazil.
§ 2 - A priority claim must be proved by means of a suitable document of
origin, containing the number, date, title, specification and, when they exist,
claims and drawings, accompanied by a simple translation of the certificate of
filing or equivalent document containing data identifying the application, the
contents of which will be of the entire responsibility of the applicant.
§ 3 - If not effected at the time of filing, the proof must be presented
within 180 (one hundred and eighty) days from filing.
§ 4 - For international applications filed in virtue of a treaty in
force in Brazil, the translation provided for in § 2 must be filed within the period of 60 (sixty) days from the date
of entry into national processing.
§ 5 - When the application filed in Brazil is completely contained in
the document of origin, a declaration by the applicant in this respect will be
sufficient to substitute the simple translation.
§ 6 - When the priority is obtained by virtue of assignment, the
corresponding document must be filed within 180 (one hundred and eighty) days
from filing or, in the case of entry into national processing, within 60
(sixty) days from the date of such entry,
consular legalisation in the country of origin not being required.
§ 7 - Failure to file proof within the time limits established in this
article will result in loss of the priority.
§ 8 - In the case of an application filed with a priority claim, any
request for early publication must be made with proof of the priority having
been filed.
Article 17 - An application for a patent of
invention or for a utility model originally filed in Brazil, without a priority
claim and not yet published, will guarantee a right of priority to a later
application in respect of the same subject matter filed in Brazil by the same
applicant or by his successors, within the period of 1 (one) year.
§ 1 - Priority will only be recognised for subject matter that is
disclosed in the earlier application and will not extend to any new matter that
is introduced.
§ 2 - The pending earlier application will be considered as definitively
shelved.
§ 3 - A patent application resulting from the division of an earlier
application cannot serve as the basis for a priority claim.
Section III
Non-patentable Inventions and Utility Models
Article 18 - The following are not patentable:
I - that which is contrary to morals, good customs and public security,
order and health;
II - substances, matter, mixtures, elements or products of any kind, as
well as the modification of their physical-chemical properties and the
respective processes of obtaining or modifying them, when they result from the
transformation of the atomic nucleus; and
III - living beings, in whole or in part, except transgenic
micro-organisms meeting the three patentability requirements - novelty,
inventive activity and industrial application - provided for in article 8 and
which are not mere discoveries;
Sole Paragraph - For the purposes of this law, transgenic micro-organisms are
organisms, except the whole or part of plants or animals, that exhibit, due to
direct human intervention in their genetic composition, a characteristic that
can not normally be attained by the species under natural conditions.
CHAPTER III
PATENT APPLICATIONS
Section I
Filing of the Application
Article 19 - A patent application, in
accordance with the conditions established by INPI, will contain:
I - a request;
II - a specification;
III - claims;
IV- drawings, if any;
V - an abstract; and
VI - proof of payment of the filing fee.
Article 20 - Once presented, the application
will be submitted to a formal preliminary examination and, if in due order,
will be protocolled, the date of
presentation being considered as the filing date.
Article 21 - An application that does not
formally meet the requirements of article 19, but which does contain data
relating to the subject matter, the applicant and the inventor, may be
delivered to INPI against a dated receipt which will establish the requirements
to be met within a period of 30 (thirty) days, on pain of return or shelving of
the documentation.
Sole Paragraph - Once the requirements have been met, filing will be considered to
have been made on the date of the receipt.
Section II
Conditions of the Application
Article 22 - An application for a patent of
invention must refer to a single invention or to a group of inventions so
interrelated as to comprise a single inventive concept.
Article 23 - An application for a utility
model must refer to a single principal model that may include a plurality of
distinct additional elements or structural or configurative variations,
provided that technical-functional and corporeal unity of the object is
maintained.
Article 24 - The specification must describe
the subject matter clearly and sufficiently so as to enable a person skilled in
the art to carry it out and to indicate, when applicable, the best mode of
execution.
Sole Paragraph - In the case of biological material essential for the practical
execution of the subject matter of the application, which cannot be described
in the form of this article and which has not been accessible to the public,
the specification will be supplemented by a deposit of the material in an
institution authorised by INPI or indicated in an international agreement.
Article 25 - The claims must be based on the
specification, characterising the particularities of the application and
defining clearly and precisely the subject matter to be protected.
Article 26 - A patent application may, until the end of examination, be divided, ex officio or on request of the applicant, into two or more
applications, provided that the divisional application:
I - makes specific reference to the original application; and
II - does not exceed the matter disclosed in the original application.
Sole Paragraph - A request for division not in accordance with the provisions of this
article will be shelved.
Article 27 - Divisional applications will have
the filing date of the original application and the benefit of the priority of
the latter, if any.
Article 28 - Each divisional application will
be subject to payment of the corresponding fees.
Article 29 - A patent application which is
withdrawn or abandoned will be published.
§ 1 - A request for withdrawal must be filed within 16 (sixteen) months
counted from the date of filing or of the earliest priority.
§ 2 - Withdrawal of an earlier application without producing any effect
will confer priority on the first later application.
Section III
Prosecution and examination of an application
Article 30 - A patent application will be kept
secret during 18 (eighteen) months counted from the date of filing or of the
earliest priority, if any, after which it will be published, with the exception
of the case provided for in article 75.
§ 1 - Publication of the application may be anticipated on request by
the applicant.
§ 2 - The publication must include data identifying the patent
application, a copy of the specification, claims, abstract and drawings being
made available to the public at INPI.
§ 3 - In the case provided for in the sole paragraph of article 24, the
biological material will be made available to the public at the time of the
publication to which this article refers.
Article 31 - Documents and information for
aiding examination may be filed by interested parties between the publication
of the application and the termination of examination.
Sole Paragraph - Examination will not be initiated prior to 60 (sixty) days from
publication of the application.
Article 32 - In order better to clarify or
define a patent application, the applicant may effect alterations up to the
request for examination, provided that they be limited to the subject matter
initially disclosed in the application.
Article 33 - Examination of a patent
application must be requested by the applicant or by any interested party,
within 36 (thirty six) months counted from the date of filing, under pain of
shelving of the application.
Sole Paragraph - The patent application may be reinstated, on request by the
applicant, within 60 (sixty) days counted from the shelving, on payment of a
specific fee, under pain of definitive shelving.
Article 34 - Once examination has been
requested and whenever so requested, the following should be filed within 60
(sixty) days, on pain of shelving of the application:
I - objections, prior art searches and the results of examination for
the grant of corresponding applications in other countries, when there is a
priority claim;
II - documents necessary to regularise the proceedings and examination
of the application; and
III - a simple translation of the suitable document mentioned in § 2 of
article 16, should it have been substituted by the declaration provided for in
§ 5 of that same article.
Article 35 - At the time of the technical
examination, a search report and an opinion will be prepared with respect to:
I - the patentability of the application;
II - the adaptation of the application to the nature of protection
claimed;
III - the reformulation of the application or the division thereof; or
IV - technical requirements.
Article 36 - When the opinion is for
non-patentability or for the inadequacy of the application for the nature of
protection claimed or formulates any requirement, the applicant will be
notified to reply within a period of 90 (ninety) days.
§ 1 - If no reply to a requirement is filed, the application will be
definitively shelved.
§ 2 - If a reply to a requirement is filed, but the latter is not met or
its formulation is contested, and independently of arguments being filed
regarding patentability or adequacy, examination will be continued.
Article 37 - Once examination is concluded, a
decision will be issued, allowing or rejecting the patent application.
CHAPTER IV
PATENT GRANT AND TERM
Section I
Patent Grant
Article 38 - A Patent will be granted after
the application is allowed and, after proving payment of the corresponding fee,
the respective letters-patent will be issued.
§ 1 - Payment of the fee and the respective proof thereof must be
effected within 60 (sixty) days from allowance.
§ 2 - The fee provided for in this article may also be paid and proved
within 30 (thirty) days after the time limit provided for in the previous
paragraph, independently of any notification, by payment of a specific fee, on
pain of definitive shelving of the application.
§ 3 - The patent will be considered granted as of the date of
publication of the respective act.
Article 39 - The letters-patent will include
the respective number, title and nature of protection, the name of the
inventor, observing the provisions of article 6, § 4, the qualification and
domicile of the patentee, the term, the specification, the claims and the
drawings, as well as data relating to the priority.
Section II
Patent Term
Article 40 - A Patent of invention will have a
term of 20 (twenty) years and a utility model patent a term of 15 (fifteen)
years, counted from the filing date.
Sole Paragraph - The term will not be less than 10 (ten) years for patents of
invention and 7 (seven) years for utility model patents, counted from grant,
except when INPI is prevented from proceeding with the examination as to the
merit of the application, due to a proven pendente
lite or for reasons of “force majeure”.
CHAPTER V
PROTECTION CONFERRED BY A PATENT
Section I
The Rights
Article 41 - The extension of the protection
conferred by a patent will be determined by the content of the claims,
interpreted in the light of the specification and drawings.
Article 42 - A patent confers on its
proprietor the right to prevent third parties from manufacturing, using,
offering for sale, selling or importing for such purposes without his consent:
I - a product that is the subject of a patent;
II - a process, or product directly obtained by a patented process;
§ 1 - The patentee is further guaranteed the right to prevent third
parties from contributing to the practice by other parties of the acts referred
to in this article.
§ 2 - The rights in a process patent will be violated, insofar as item
II is concerned, when the holder or owner of a product fails to prove, through
specific judicial ruling, that it was obtained by a manufacturing process
different from that protected by the patent.
Article 43 - The provisions of the previous
article do not apply:
I - to acts practised by unauthorised third parties privately and
without commercial ends, provided they do not result in prejudice to the
economic interests of the patentee;
II - to acts practised by unauthorised third parties for experimental
purposes, related to studies or to scientific or technological research;
III - to the preparation of a medicine according to a medical
prescription for individual cases, executed by a qualified professional, as
well as to a 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 patentee or
with his consent;
V - to third parties who, in the case of patents related to living
matter, use, without economic ends, the patented product as the initial source
of variation or propagation for obtaining other products; and
VI - to third parties who, in the case of patents related to living
matter, use, place in circulation or commercialise a patented product that has
been introduced lawfully onto the market by the patentee or his licensee,
provided that the patented product is not used for commercial multiplication or
propagation of the living matter in question.
Article 44 - A patentee is guaranteed the
right to obtain compensation for the unauthorised exploitation of the subject
matter of the patent, including exploitation that occurred between the date of
publication of the application and that of grant of the patent.
§ 1 - If the infringer obtains, by any means, knowledge of the contents
of a filed application, prior to publication, the period of undue exploitation,
for the effect of compensation, will be counted from the date of commencement
of the exploitation.
§ 2 - When the subject matter of a patent application relates to
biological material, deposited under the terms of the sole paragraph of article
24, the right to compensation will only be conferred when the biological
material has been made available to the public.
§ 3 - The right to obtain compensation for unauthorised exploitation,
including with respect to the period prior to grant of the patent, is limited
to the contents of the subject matter of the patent, under the terms of article
41.
Section II
Prior User
Article 45 - A person who in good faith, prior
to the date of filing or of priority of a patent application, exploits its
object in this country, will be guaranteed without onus the right to continue
the exploitation, in the previous form and conditions.
§ 1 - The right conferred under the terms of this article can only be
ceded by transfer or leasing, together with the business of the undertaking, or
the part thereof that has direct relation with the exploitation of the subject
matter of the patent.
§ 2 - The right to which this article refers will not be guaranteed to a
person who had knowledge of the subject of the patent due to disclosure under
the terms of article 12, provided that the application was filed within 1 (one)
year from the disclosure.
CHAPTER VI
PATENT NULLITY
Section I
General Provisions
Article 46 - A patent is null when granted
contrary to the provisions of this law.
Article 47 - Nullity may not be applicable to
all of the claims, a condition for partial nullity being that the subsisting
claims constitute subject matter that is patentable per se.
Article 48 - Nullity of a patent will produce
effects as from the filing date of the application.
Article 49 - In the case of the provisions of
article 6 not having been observed, the inventor may alternatively claim, in a
court action, the adjudication of the patent.
Section II
Administrative Nullity Procedure
Article 50 - Nullity of a patent will be declared
administratively when:
I - any of the legal requisites have not been met;
II - the specification and the claims do not meet the provisions of
articles 24 and 25, respectively;
III - the subject of protection of the patent extends beyond the contents
of the application as originally filed; or
IV - any of the essential formalities indispensable for grant were
omitted during prosecution.
Article 51 - The nullity procedure may be
instituted ex officio or at the
request of any person having legitimate interest, within 6 (six) months counted
from the grant of the patent.
Sole Paragraph - The nullity procedure will continue even if the patent is extinct.
Article 52 - The patentee will be notified to
respond within a period of 60 (sixty) days.
Article 53 - Independently of a reply having
been filed, once the period determined in the previous article has passed, INPI
will issue an opinion, notifying the patentee and the applicant to reply within
a common period of 60 (sixty) days.
Article 54 - Once the period determined in the
previous article has passed, even if no replies have been presented, the
process will be decided by the President of INPI, terminating the
administrative instance.
Article 55 - The provisions of this Section
apply, where appropriate, to certificates of addition.
Section III
Nullity Actions
Article 56 - A nullity action can be filed at
any time during the term of a patent by INPI or by any legitimately interested
party.
§ 1 - Nullity of a patent may be argued, at any time, as matter for defence.
§ 2 - The judge may, as a preventive or incidental measure, determine
the suspension of the effects of a patent, provided the relevant procedural
requirements are met.
Article 57 - Nullity actions will be adjudged
in the forum of the Federal Courts, and INPI, when not plaintiff, will
participate in the action.
§ 1 - The period for the defendant to reply will be 60 (sixty) days.
§ 2 - Once the decision on a nullity action becomes res judicata, INPI will publish a notice to inform third parties.
CHAPTER VII
ASSIGNMENT AND NOTATIONS
Article 58 - A patent application or patent,
the contents of which are indivisible, may be assigned in whole or in part.
Article 59 - INPI will make the following
notations:
I - assignments, mentioning the complete qualification of the assignee;
II - any limitation or onus applied to the application or patent; and
III - alterations of name, headquarters or address of the applicant or
patentee.
Article 60 - Notations will produce effect
with regard to third parties as from the date of their publication.
CHAPTER VIII
LICENSES
Section I
Voluntary Licenses
Article 61 - A patentee or applicant may
execute a license contract for exploitation.
Sole Paragraph - The licensee may be invested by the patentee with all powers to act
in defence of the patent.
Article 62 - A license contract must be
recorded at INPI to produce effect with regard to third parties.
§ 1 - The recordal will produce effect with regard to third parties as
from the date of its publication.
§2 - A license contract need not be recorded at INPI for it to have
effect for validating proof of use.
Article 63 - Any improvement to a licensed
patent belongs to the person who made it, the other contracting party being
guaranteed the right of preference with respect to a license.
Section II
Offer to License
Article 64 - A patentee may request INPI to
place his patent under offer with a view to its exploitation.
§ 1 - INPI will promote publication of the offer.
§ 2 - No exclusive voluntary license contract will be recorded by INPI without
the patentee having withdrawn the offer.
§ 3 - No patent subject to an exclusive voluntary license may be made
the subject of an offer.
§ 4 - The patentee may withdraw the offer at any time prior to the
express acceptance of its terms by an interested party, whereby the provisions
of article 66 will not apply.
Article 65 - In the absence of an agreement
between the patentee and the licensee, the parties may request INPI to
arbitrate the remuneration.
§ 1 - For the effects of this article, INPI will observe the provisions
of § 4 of article 73.
§ 2 - The remuneration may be reviewed after 1 (one) year of it being
established.
Article 66 - A patent under offer will have
its annuities reduced by one half during the period between the offer and the
grant of the first license of any type.
Article 67 - The patentee may request
cancellation of the license if the licensee does not initiate effective
exploitation within 1 (one) year of the grant of the license, interrupts
exploitation for a period longer than 1 (one) year or, further, if the
conditions for exploitation are not obeyed.
Section III
Compulsory Licenses
Article 68 - A patentee will be subject to
have his patent licensed compulsorily if he exercises the rights resulting
therefrom in an abusive manner or by means of it practices abuse of economic
power that is proven under the terms of the law by an administrative or court
decision.
§ 1 - The following may also result in a compulsory license:
I - the non-exploitation of the subject matter of the patent in the
territory of Brazil, by lack of manufacture or incomplete manufacture of the
product or, furthermore, by lack of complete use of a patented process, except
in the case of non-exploitation due to economic inviability, when importation
will be admitted; or
II - commercialisation that does not meet the needs of the market.
§ 2 - The license can only be requested by a party with legitimate
interest and that has the technical and economic capacity to carry out the
efficient exploitation of the subject matter of the patent, that should be
destined predominantly for the internal market, suppressing, in this case, the
exception provided for in item I of the previous paragraph.
§ 3 - In the case that a compulsory license is granted due to abuse of
economic power, a period of time, limited to that provided for in article 74,
will be guaranteed to the licensee proposing to manufacture locally, to proceed
with the importation of the subject matter of the license, provided it has been
placed on the market directly by the patentee or with his consent
§ 4 - In the case of importation for exploitation of a patent and in the
case of importation provided for in the previous paragraph, the importation by
third parties of a product manufactured according to a process or product
patent will equally be allowed, provided it has been placed on the market
directly by the patentee or with his consent.
§ 5 - A compulsory license, to which § 1 relates, may only be requested
after 3 (three) years from grant of the patent.
Article 69 - A compulsory license will not be
granted if, at the date of the request, the patentee:
I - justifies non-use for legitimate reasons;
II - proves that serious and effective preparations for exploitation
have been carried out; or
III - justifies lack of manufacture or commercialisation due to legal
obstacles.
Article 70 - A compulsory license will also be
granted when the following hypotheses are shown to exist cumulatively:
I - a situation of dependency of one patent on another is characterised;
II - the subject matter of the dependent patent constitutes a
substantial technical advance in relation to the earlier patent; and
III - the patentee does not come to an agreement with the patentee of
the dependent patent for the exploitation of the earlier patent.
§ 1 - For the purposes of this article, a dependent patent is considered
to be one the exploitation of which depends obligatorily on the use of the
subject matter of the earlier patent.
§ 2 - For the purposes of this article, a process patent may be considered
as dependent on a patent for the respective product, as also a product patent
may be dependent upon a process patent.
§ 3 - The proprietor of a patent licensed under the terms of this
article will have the right to a compulsory cross license under the dependent
patent.
Article 71 - In cases of national emergency or
public interest, declared in an act of the Federal Executive Authorities,
insofar as the patentee or his licensee does not meet such necessity, a
temporary ex officio non-exclusive
compulsory license for the exploitation of the patent may be granted, without
prejudice to the rights of the respective patentee.
Sole Paragraph - The act of grant of the license will establish its term of validity
and the possibility of extension.
Article 72 - Compulsory licenses will always
be granted without exclusivity, sublicensing not being permitted.
Article 73 - An application for a compulsory
license must be formulated by indicating the conditions offered to the
patentee.
§ 1 - Once the application for a license has been filed, the patentee
will be notified to respond within a period of 60 (sixty) days, at the end of
which, in the absence of a response from the patentee, the proposal will be
considered as accepted under the conditions offered.
§ 2 - An applicant for a license who alleges abuse of patent rights or
abuse of economic power must file documentary proof.
§ 3 - If a compulsory license is requested on the basis of lack of
exploitation, it will rest with the patentee to prove exploitation.
§ 4 - If there is a contestation, INPI may take the necessary steps,
including the establishment of a committee that may include specialists that
are not part of INPI, with a view to arbitrating the remuneration that will be
paid to the patentee.
§ 5 - The organs and entities of the direct or indirect, federal, state
and municipal public administration will provide INPI with such information as
is requested with a view to assisting the arbitration of remuneration.
§ 6 - In arbitrating remuneration, the circumstances of each case will
be considered, taking into account obligatorily the economic value of the
license granted.
§ 7 - Once the process is duly filed, INPI will come to a decision
regarding the grant and the conditions of the compulsory license within a period
of 60 (sixty) days.
§ 8 - Appeals against decisions granting a compulsory license will not
have suspensive effects.
Article 74 - In the absence of legitimate
reasons, the licensee must initiate exploitation of the subject matter of the
patent within a period of 1 (one) year from the grant of the license,
interruption for an equal period being permitted.
§ 1 - The patentee may request revocation of the license if the
provisions of this article are not met.
§ 2 - The licensee will be vested with all powers to act in defence of
the patent.
§ 3 - After grant of a compulsory license, the assignment thereof will
only be permitted when effected together with the assignment, transfer or
leasing of that part of the undertaking that exploits it.
CHAPTER IX
PATENTS OF INTEREST TO NATIONAL DEFENCE
Article 75 - A patent application originated
in Brazil the object of which is of interest to national defence will be
processed in secrecy and will not be subject to the publications provided for
in this law.
§ 1 - INPI will send the application immediately to the competent organ
of the Executive Authorities for the purpose of providing, within 60 (sixty)
days, an opinion regarding secrecy. After such period has passed without any
opinion by the competent organ, the application will be processed normally.
§ 2 - Excepting express authorisation by the competent organ, the filing
abroad of a patent application the subject matter of which is considered to be
of interest to national defence, as well as any disclosure thereof, is prohibited.
§ 3 - The exploitation and the assignment of an application or patent of
interest to national defence are conditioned to prior authorisation by the
competent organ, due compensation being guaranteed whenever this implies a
restriction to the rights of the applicant or patentee.
CHAPTER X
CERTIFICATE OF ADDITION OF AN INVENTION
Article 76 - On payment of a specific fee, the
applicant or patentee of a patent of invention may request a certificate of
addition to protect an improvement or development introduced in the subject
matter of the invention, even if lacking inventive activity, provided that it
shares the same inventive concept.
§ 1 - If publication of the main application has already taken place,
the application for the certificate of addition will be published immediately.
§ 2 - Examination of the application for a certificate of addition will
be in accordance with the provisions of articles 30 to 37, without prejudice to
the provisions of the previous paragraph.
§ 3 - An application for a certificate of addition will be rejected if
its subject matter does not involve the same inventive concept.
§ 4 - The applicant may, within the period for appeal, by payment of the
corresponding fee, request the conversion of an application for a certificate of
addition into a patent application benefiting from the date of filing of the
application for the certificate.
Article 77 - A certificate of addition is
accessory to the patent, has the same expiry date and accompanies it for all
legal effects.
Sole Paragraph - In a nullity process, the
patentee may request that the subject matter contained in the certificate of
addition be examined to verify the possibility of its subsistence, without
prejudice to the term of protection of the patent.
CHAPTER XI
EXTINCTION OF PATENTS
Article 78 - A patent shall become extinct:
I - on expiry of the term of protection;
II - on waiver by the patentee, without prejudice to the rights of third
parties;
III - on forfeiture;
IV - on non-payment of the annual fee, within the periods provided for
in § 2 of article 84 and in article 87; and
V - on non-observance of the provisions of article 217.
Sole Paragraph - Once a patent becomes extinct, its object falls within the public
domain.
Article 79 - Waiver will only be permitted if
it does not prejudice the rights of third parties.
Article 80 - A patent becomes forfeit, ex officio, or at the request of any
party with a legitimate interest if, after 2 (two) years from the grant of the
first compulsory license, such period has not been sufficient to prevent or
correct abuse or disuse, excepting legitimate reasons.
§ 1 - A patent will become forfeit when, on the date of application for
forfeiture or of the ex officio
commencement of the respective process, its exploitation has not been initiated.
§ 2 - In the process for forfeiture commenced at the request of any
party with a legitimate interest, INPI may continue the process on desistment
by that party.
Article 81 - The patentee will be notified to
respond to the forfeiture request within a period of 60 (sixty) days, the onus
of proof regarding exploitation falling on him.
Article 82 - A decision will be pronounced
within 60 (sixty) days counted from the end of the period mentioned in the
previous article.
Article 83 - A decision of the forfeiture
process will produce effect as from the day of the request or of the
publication of the commencement of the ex
officio process.
CHAPTER XII
ANNUAL FEES
Article 84 - The applicant and patentee are
subject to the payment of annual fees, as from the beginning of the third year
from the date of filing.
§ 1 - Advance payment of the annual fees will be regulated by INPI.
§ 2 - The payment should be effected within the first 3 (three) months
of each annual period, but may still be effected within the following 6 (six)
months, independently of notification, by payment of an additional fee.
Article 85 - The provisions of the previous
article apply to international applications filed in virtue of a treaty in
force in Brazil, the payment of annual fees due before the date of entry into
national processing having to be effected within a period of 3 (three) months
from that date.
Article 86 - Failure to pay an annual fee,
under the terms of articles 84 and 85, will result in the shelving of the
application or extinction of the patent.
CHAPTER XIII
RESTORATION
Article 87 - A patent application and patent
may be restored, if the applicant or patentee so requests, within 3 (three)
months counted from notification of shelving of the application or extinction
of the patent, on payment of a specific fee.
CHAPTER XIV
INVENTIONS AND UTILITY MODELS MADE BY EMPLOYEES
OR SUPPLIERS OF SERVICES
Article 88 - An invention or utility model
will belong exclusively to the employer when it results from a work contract
being executed in Brazil and the object of which is research or the exercise of
inventive activity or when such results from the nature of the services for
which the employee was contracted.
§1 - Except when there are express contractual provisions to the
contrary, remuneration for the work to which this article refers will be
limited to the salary agreed upon.
§ 2 - In the absence of proof to the contrary, an invention or utility
model for which a patent is requested by an employee within 1 (one) year from
the extinction of the contract of employment will be considered as having been
developed while the contract was in force.
Article 89 - An employer, who is the
proprietor of a patent, may grant the employee, who is the author of the
invention or improvement, participation in the economic gains resulting from
the exploitation of the patent, as a result of negotiation with the interested
party or as provided for by a norm of the undertaking.
Sole Paragraph - The participation referred to in this article will not in any way be
incorporated into the salary of the employee.
Article 90 - An invention or utility model
developed by an employee will belong exclusively to the employee provided that
it is unconnected to his work contract and when it does not result from the use
of resources, means, data, materials, installations or equipment of the
employer.
Article 91 - The ownership of an invention or
utility model will be common, in equal parts, when it results from the personal
contribution of the employee and from resources, data, means, materials,
installations or equipment of the employer, without prejudice to express
contractual provisions to the contrary.
§ 1 - When there is more than one employee, the part due to them will be
divided equally between all of them, except when agreed to the contrary.
§ 2 - The employer will be guaranteed the right to an exclusive license
for exploitation and the employee will be guaranteed fair remuneration.
§ 3 - Exploitation of the subject matter of the patent, in the absence
of an agreement, must be initiated by the employer within 1 (one) year counted
from the date of grant, under pain of the property in the patent being
transferred to the exclusive ownership of the employee, without prejudice to
the hypothesis of lack of exploitation for legitimate reasons.
§ 4 - In the case of assignment, any of the co-owners may exercise the
right of preference under identical conditions.
Article 92 - The provisions of the preceding
articles, as far as they are applicable, apply to the relationship between an
autonomous worker or a trainee and the contracting undertaking and between
contracting and contracted undertakings.
Article 93 - The provisions of this Chapter,
as far as they are applicable, apply to entities of the direct or indirect and
foundational, federal, state or municipal, Public Administration.
Sole Paragraph - In the hypothesis of article 88, a reward corresponding to part of
the value of the advantages obtained as a result of the application or the
patent will be guaranteed to the inventor, under the terms and conditions
provided for in the statutes or internal regulations of the entity to which
this article refers.
TITLE II
INDUSTRIAL DESIGNS
CHAPTER I
OWNERSHIP
Article 94 - The author is assured the right
to obtain a registration of an industrial design that guarantees to him the
property, under the terms established by this law.
Sole Paragraph - As far as they are applicable, the provisions of articles 6 and 7
will apply to the registration of industrial designs.
CHAPTER II
REGISTRABILITY
Section I
Registrable Industrial Designs
Article 95 - An industrial design is
considered to be any ornamental plastic form of an object or any ornamental
arrangement of lines and colours that may be applied to a product, that
provides a new and original visual result in its external configuration, and
that may serve as a type for industrial manufacture.
Article 96 - An industrial design is
considered to be new when not comprised by the state of the art.
§ 1 - The state of the art comprises everything made accessible to the
public before the date of filing of the application, in Brazil or abroad, by
use or any other means, without prejudice to the provisions of § 3 of this
article and of article 99.
§ 2 - For the sole purpose of determining novelty, the whole contents of
an application for a patent or a registration filed in Brazil, but not yet
published, will be considered as included in the state of the art from the date
of filing, or from the priority claimed, provided that it is published, even
though subsequently.
§ 3 - An industrial design of which disclosure occurred within the 180
(one hundred and eighty) days preceding the date of filing the application or
of the priority claimed will not be considered as included in the state of the
art, provided such disclosure is made in accordance with the situations
provided for in items I to III of article 12.
Article 97 - An industrial design is
considered original when it results in a distinctive visual configuration in
relation to other prior objects.
Sole Paragraph - The original visual result may be the result of the combination of
known elements.
Article 98 - Works of a purely artistic nature
are not considered to be industrial designs.
Section II
Priority
Article 99 - As far as they are applicable,
the provisions of article 16, except for the time limit provided for in § 3 of
that article, which will be 90 (ninety) days, apply to applications for
registration.
Section III
Non-Registrable Industrial Designs
Article 100 - An industrial design is not
registrable for:
I - that which is contrary to morals and good customs or which offends
the honour or image of people or is contrary to the liberty of conscience,
belief, religious cults or ideas and feelings worthy of respect and veneration.
II - the necessary common or ordinary shape of an object or, further,
that which is determined essentially by technical or functional considerations.
CHAPTER III
APPLICATIONS FOR REGISTRATION
Section I
Filing of the application
Article 101 - An application for registration,
in accordance with conditions established by INPI, will contain:
I - a request;
II - a specification, if applicable;;
III - claims, if applicable;
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 that comprise an application for registration must be
filed in the Portuguese language.
Article 102 - Once presented, the application
will be submitted to a formal preliminary examination and, if in due order,
will be protocolled, the filing date being considered to be the date of
presentation.
Article 103 - An application that does not
formally meet the requirements of article 101, but which does contain
sufficient data relating to the applicant, to the industrial design and to the
author, may be delivered to INPI against a dated receipt which will establish
the requirements to be met within a period of 5 (five) days, on pain of being
considered non-existent.
Sole Paragraph - Once the requirements have been met, filing will be considered to
have been made on the date of presentation of the application.
Section II
Conditions of the Application
Article 104 - An application for an industrial
design registration must refer to a single object, a plurality of variations
being permitted, provided that they are destined for the same purpose and
maintain between them the same preponderant distinctive characteristic, each
application being limited to a maximum of 20 (twenty) variations.
Sole Paragraph - The drawing must clearly and sufficiently represent the object and
its variations, if they exist, so as to allow
its reproduction by a person skilled in the art.
Article 105 - When secrecy is requested under
the terms of article 106, § 1, the application may be withdrawn up to 90
(ninety) days counted from the date of filing.
Sole Paragraph - Withdrawal of an earlier application without producing any effect
will confer priority on the first later application.
Section III
Prosecution and examination of an application
Article 106 - Once an application for an
industrial design registration has been filed and the provisions of articles
100, 101 and 104 have been observed, it will be published automatically and the
registration will be simultaneously granted, the respective certificate being issued.
§ 1 - On request by the applicant at the time of filing, the application
may be kept secret for a period of 180 (one hundred and eighty) days counted
from the filing date, after which it will be processed.
§ 2 - If the applicant avails himself of the provisions of article 99,
processing of the application will await presentation of the priority document.
§ 3 - If the provisions of articles 101 and 104 are not met, a
requirement will be made to which a response should be filed within 60 (sixty)
days, on pain of definitive shelving.
§ 4 - If the provisions of article 100 are not met, the application for
registration will be rejected.
CHAPTER IV
GRANT AND TERM OF THE REGISTRATION
Article 107 - The certificate must include the
number and title, the name of the author, observing the provisions of § 4 of
article 6, the name, nationality and domicile of the registrant, the term, the
drawings, data relating to any foreign priority and, when applicable, the
specification and claims.
Article 108 - The registration will have a term
of 10 (ten) years counted from the date of filing and will be renewable for
three successive periods of 5 (five) years each.
§ 1 - An application for renewal must be made during the last year of
the term of the registration and be accompanied by proof of payment of the
respective fee.
§ 2 - If an application for renewal has not been requested prior to the
end of the term of the registration, the registrant may make such request
within the subsequent 180 (one hundred and eighty) days, on payment of an
additional fee.
CHAPTER V
PROTECTION CONFERRED BY A REGISTRATION
Article 109 - The property in an industrial
design is acquired by a validly granted registration.
Sole Paragraph - As far as applicable, the provisions of article 42 and of items I, II
and IV of article 43, will apply.
Article 110 - A person who in good faith, prior
to the date of filing or of the priority of an application for registration,
exploited the subject matter in this country, will be guaranteed the right to
continue the exploitation in the previous manner and conditions, without onus.
§ 1 - The right conferred under the terms of this article can only be
ceded, by transfer or leasing, together with the business or undertaking, or
part thereof that has direct relation with the exploitation of the object of
the registration.
§ 2 - The right to which this article refers will not be guaranteed to a
person who had knowledge of the object of the registration due to disclosure
under the terms of § 3 of article 96, provided that the application was filed
within 6 (six) months from the disclosure.
CHAPTER VI
EXAMINATION ON MERIT
Article 111 - A registrant of an industrial
design may, at any time during the term of registration, request examination as
to novelty and originality of the object of the registration.
Sole Paragraph - INPI will issue an opinion on merit that will serve as the basis for
the ex officio institution of nullity
proceedings of the registration if it is concluded that at least one of the
requirements provided for in articles 95 to 98 are absent.
CHAPTER VII
Nullity of
RegistrationS
Section I
General Provisions
Article 112 - A registration is null if granted
contrary to the provisions of this law.
§ 1 - Nullity of a registration will produce effects as from the date of
filing of the application.
§ 2 - In the case of inobservance of the provisions of article 94, the
author may alternatively claim adjudication of the registration.
Section II
Administrative Nullity Proceedings
Article 113 - Nullity of a registration will be
declared administratively when it has been granted contrary to articles 94 to
98.
§ 1 - Nullity proceedings may be instituted ex officio or at the request of any person having a legitimate
interest within 5 (five) years from grant of the registration, without
prejudice to the hypothesis provided for in the sole paragraph of article 111.
§ 2 - A request or ex officio
institution will suspend the effects of grant of a registration if presented or
published within 60 (sixty) days from grant.
Article 114 - The registrant will be notified
to respond within 60 (sixty) days counted from the date of the publication.
Article 115 - INPI will issue an opinion after
the period specified in the previous article, whether there is a response or
not, notifying the registrant and the applicant to respond within 60 (sixty)
days.
Article 116 - After the period specified in the
previous article, even if no responses have been made, the process will be
decided by the president of INPI, thereby bringing to a close the administrative
instance.
Article 117 - Nullity proceedings will be
continued even when the registration is extinct.
Section III
Nullity Action
Article 118 - As far as they are applicable,
the provisions of articles 56 and 57 will apply to actions for nullity of a
registration for an industrial design.
CHAPTER VIII
Extinction of
RegistrationS
Article 119 - A registration will become
extinct:
I - on expiry of the term of protection;
II - on waiver by the registrant, without prejudice to the rights of
third parties;
III - on non-payment of the fee, provided for in articles 108 and 120;
or
IV - on non-observance of the provisions of article 217.
CHAPTER IX
Quinquennial Fee
Article 120 - The proprietor of a registration
is subject to the payment of a quinquennial fee as of the second quinquennium
from the filing date.
§ 1 - Payment of the second quinquennium will be made during the 5th
(fifth) year of the term of the registration.
§ 2 - Payment of the following quinquennial fees will be presented
together with the application for renewal referred to in article 108.
§ 3 - Payment of quinquennial fees may still be made within the 6 (six)
months following the period established in the previous paragraph, by payment
of an additional fee.
CHAPTER X
Final Provisions
Article 121 - As far as they are applicable,
the provisions of articles 58 to 63 apply to subject matter covered by the
present Title, the rights of the employee or supplier of services being
governed by the provisions of articles 88 to 93.
TITLE III
MARKS
CHAPTER I
REGISTRABILITY
Section I
Signs Registrable as Marks
Article 122 - Any visually perceptive
distinctive sign, when not prohibited under law, is susceptible of registration
as a mark.
Article 123 - For the effects of this law, the
following definitions apply:
I - product or service mark: that used to distinguish a product or
service from one having a different origin, that is identical, similar or akin;
II - certification mark: that used to attest that a product or service
conforms with determined technical norms or specifications, notably with
reference to its quality, its nature, the material used and the methodology
employed; and
III - collective mark: that used to identify products or services
originated by members of a given entity.
Section II
Signs Not Registrable as Marks
Article 124 - The following are not registrable
as marks:
I - crests, armorial bearings, medals, flags, emblems, official public
distinctions and monuments, be they national, foreign or international, as well
as any respective designations, figures or imitations;
II - an isolated letter, digit or date, except when sufficiently
distinctive;
III - expressions, figures, drawings or any other sign contrary to
morals and good customs or which offend a person’s honour or image or are an
affront to the liberty of conscience, beliefs, religious cults or to ideas and
sentiments worthy of respect and veneration;
IV - designations or acronyms of a public entity or establishment, when
registration is not requested by that public entity or establishment;
V - reproductions or imitations of a characteristic or differentiating
element of a title of establishment or the name of an undertaking belonging to
a third party, which are likely to cause confusion or association with such
distinctive signs;
VI - signs of a generic, necessary, common, usual or simply descriptive
character, when related to the product or service to be distinguished, or those
commonly used to designate a characteristic of the product or service with
respect to its nature, nationality, weight, value, quality and moment of
production or of giving a service, except when presented in a sufficiently
distinctive manner;
VII - signs or expressions used only as
