History of the annotation of contracts with INPI

The set of rules and procedures that support the public registration of contracts involving industrial property rights and transfer of technology in Brazil has a long-standing tradition. Based on the main conditions or contexts of the public policies adopted by the country for economic development, the history of INPI’s area of contracts may be presented in four phases. See as follows.  

In the first phase, between 1950 and 1970, the rules and practices, at first, focused on controlling the remittance of royalties and profits abroad and later, encouraging the industrial development in priority sectors.

The rules representing this phase are Law No. 3,470/58, which limited in 5% the tax deduction of expenses with payment of royalties and technical support services, and the Ordinance of the Ministry of Finance No. 436 of 1958, which established the differentiated coefficients for deduction, according to the degree of essentiality of the sectors of activity.

The registration of technology agreements was established on September 3^rd, 1962, with Law No. 4,131. 

In the second phase, between 1970 and 1990, the focus was the regulation of the technology market, based on the convenience and interest regarding the objectives and strategies of the national policy for industrial development.

The creation of INPI (Law No. 5,648/70) was one of the most representative milestones of this stage, as well as the institution of the New Code of Industrial Property (CIP, Law No. 5,772/71).

INPI was organized aiming at speeding up and regulating the transfer of technology and establishing better conditions to negotiate and use patents, among others similar rights.

With CIP, acts and contracts implying transfer of technology were subject to annotation with INPI. 

The third phase, between 1990 and 2000, was marked by the flexibilization of rules and procedures related to the annotation of contracts, which were made within the context of the reforms by the Government.

From then on, the Intellectual Property System sought to encourage investments in Research and Development (R&D) and promote greater international transfer of technology.

At this stage, it is worth emphasizing the approval of several laws and regulations related to the transfer of technology, such as Law No. 8,383/91, which revoked the provisions preventing remittances, as transfer of technology, between headquarters and subsidiaries in the Country; Law No. 8,955/94, which regulated the franchises; Law No. 9,279/96, which replaced the Code of Industrial Property of 1971; and other related laws, such as Law No. 9,609/96 (Software) and Law No. 9,456/97 (Protection of Plant Variety). 

As of 2000, the annotation and the registration of contracts were included in the new context based on the coordination and strengthening of the national innovation system. Actions related to antitrust and international integration of the Brazilian economy are also included in this recent scenario, in which services that support the market for technology stand out. It can be noticed that, at this stage, INPI’s structure went through a reorganization, initiated as of 2004 with Decree No. 5,147, aiming at modernizing the procedures, providing better services and a greater interaction with users.  

Source: prepared based on Course DL 101P BR –Technology Agreements Module, WIPO/INPI, 2012