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Rule #179/2017 – Assignments related to PCT national phase applications

March 2, 2017

(BRPTO’s IP gazette of March 1st, 2017)

The BRPTO issued on March 1st, 2017, and made available on March 2nd, a new rule related to the assignment of rights for PCT national phase applications, which revokes Rule #174/2016, issued on December 6th, 2016.

Article 16, paragraph 6, of the Brazilian patent statute establishes that when a Brazilian patent application claims a priority that was obtained by assignment, the applicant must submit the written assignment of the priority application (or the priority right). Rule #179/2017 regulates the requirements to be complied with when the applicant of the priority application is different from the applicant of the PCT application claiming its priority, due to an assignment of rights. According to this new rule, an assignment of priority rights, a declaration of assignment or an equivalent document can be submitted to prove the assignment of priority rights and they must comply with the following requirements:

a) it must contain the identifying data of the prior application (priority application) as well as the identifying data of the assignor(s) and the assignee(s);
b) it must be submitted within 60 days counted from the Brazilian national phase entry date, and
c) it can be replaced by the declaration submitted together with the PCT international application request form (PCT/RO/101 – Box VIII (iii)), under rule 4.17 (iii), as set forth by rule 51bis. 1) a) (iii) of the regulations under the Patent Cooperation Treaty.

It is important to mention that the BRPTO will no longer require the execution of the assignment of priority rights prior to the international filing date of the PCT application, as previously required by Rule #174/2016. However, the assignment of priority rights must ratify previous acts, when executed after the international filing date.

Rule #179/2017 also regulates the requirements to be complied with when the applicant of the PCT application is different from the applicant of the Brazilian national phase application. According to article 3 of Rule #179/2017, if the assignment of PCT rights has not been recorded before the international bureau (IB), the applicant of the Brazilian national phase application must file an assignment of PCT rights, a declaration of assignment or an equivalent document, together with the Brazilian national phase entry petition. Additionally, the following requirements must be complied with:

a) the applicant(s) of the Brazilian national phase application must be the assignor(s) and the assignee(s) when the PCT right has been obtained by partial assignment of PCT rights, and the applicant(s) of the Brazilian national phase application must be the assignee(s) when the PCT right has been obtained by total assignment of PCT rights; and
b) it must contain the identifying data of the PCT international application as well as the identifying data related to the assignor(s) and the assignee(s).

The notarization and consular legalization are not required for both types of assignment.
It is highly advisable that the assignment of PCT rights is recorded before the international bureau (IB), so the PCT/IB/306 form can be filed together with the Brazilian national phase entry petition. If this requirement is not fulfilled within the said deadline, the BRPTO will issue an office action, which needs to be complied with within 60 days.

When the assignment of PCT rights is executed after the Brazilian national phase entry date, the applicant of the Brazilian national phase application must be the applicant of the PCT international application. The assignment of rights shall be later submitted together with an ownership transfer/name change petition. The notarization and consular legalization/apostille will be required.

The original Portuguese version of Rule #179/2017 can be downloaded here, and the English version can be downloaded here.