The goal of the Ministry of Industry, Foreign Trade and Services is to reduce bureaucracy and increase transparency by limiting the INPI’s interference
The INPI, agency reporting to the Ministry of Industry, Foreign Trade and Services, issued Rule #70 on April 12, 2017, setting forth new procedures for the recordal of technology transfer agreements. During an official ceremony held on the same date, the Minister, Mr. Marcos Pereira, declared: “the new Rule brings a modern and updated view of INPI’s role, to be limited as a formal administrative act of registration, with the single purpose of verifying the legality of the contract’s object”.
Even though the Rule does not explicitly limit the INPI to a registry, it suggests that the agency will no longer interfere in the parties’ autonomy regarding agreements’ value or payment methods. Article 13 instates that agreement’s registration certificates will reflect the “declared contract amount” and the “declared payment format”, among other information.
The Rule implies that the INPI will refrain from analyzing any agreements under fiscal, tax, and foreign capitals laws (article 13, XI). This may have an impact in case law, such as a recent decision of the Superior Court of Justice (Appeal #1.200.528/RJ, of March 8, 2017) allowing the INPI to modify the price provision of an agreement, based on the Foreign Capital Law #4,131 of 1962; and on the interpretation that the INPI must apply the industrial property rules considering its “social, economic, legal and technical” purposes, as per Article 240 of the Brazilian IP Statute.
In terms of proceedings, the main changes are: (i) dismissal of the presentation of explanatory letters; and (ii) submission of registration forms of both parties to the agreement. The Rule maintains the 30- day term for the INPI to issue a decision (counted from the recordal application date); as well as the 60-day term for the applicant to comply with possible office actions raised by the INPI.
BRPTO Rule #70 on April 12th, 2017 shall be effective on July 1st, 2017. The original Portuguese version of BRPTO Rule #70 is available here and the English version can be downloaded here. The Japanese version is available here.
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