New BPTO Rules for Contracts

On December 30, 2022, The Brazilian Patent and Trademark Office (BPTO) published the minutes of the meeting in which several of the autarchy’s directors and members deliberated on changes in the rules for registration and annotation of contracts, the licensing of non-patented technology and the possibility of paying royalties for patents applications and industrial design.

During the meeting, the BPTO decided that the following changes regarding the procedure for registering and annotating contracts will be implemented immediately:

• Removal of mandatory notarization and apostille/legalization of foreign signatures;
• Acceptance of digital signatures without an ICP-Brazil certificate, also waiving the need for e-notarization and e-apostille;
• Removal of mandatory initials on all pages;
• Removal of the mandatory insertion of two witnesses when the contract provides for a Brazilian city as the place of signature; andRemoval of the need to present the bylaws, articles of incorporation or charter of the legal entity and the last amendment to the consolidated corporate objective and legal representation of the legal entity of the assignee, franchisee or licensee, domiciled or residing in Brazil.

In another major change, the BPTO now officially admits the licensing of non-patented technology, known as know-how licensing, no longer understanding that there must be a definitive transfer of the know-how object. In other words, with this change, the know-how may return to the licensor at the end of the contract.

In addition, the BPTO has determined that it will consult the BPTO's Specialized Federal Prosecutor on the extent of the feasibility of paying royalties also involving licenses for patents and industrial designs that are still pending.

Based on the simplification of procedures and the alignment with international practices for promoting technological innovation, these changes represent an important step in promoting economic, scientific and technological development in the country in 2023.