Technology transfer agreements – Additional information
In addition to protecting the assets, you are likely to want to license them to a company or to obtain a license to boost your business. You can also prefer to acquire knowledge not backed by industrial property rights. For these transactions to be safe and enable the payment abroad, there are contracts that must be annotated and/or registered with the National Institute of Industrial Property – INPI.
The types of existing contracts are the assignments and licensing of patents, industrial designs, and trademarks, in addition to technical assistance and supply of technology (know-how). Business franchises are also registered, thus ensuring a safe agreement and assigning validity before third parties. These are the topics to be explained on this page.
Licensing or assignment of rights, acquisition of knowledge and franchise
This item presents the requirements for the following types of contracts:
1) Trademark Use License: a contract aimed at authorizing the effective use by third parties of a trademark duly filed or registered in the country.
2) Assignment of Trademark: a contract that is intended to finally transfer ownership to third parties of the trademark regularly filed or registered in Brazil.
3) Patent Exploitation License: a contract to authorize the exploitation by third parties, at a specific time, of the patent regularly filed or granted in Brazil, identifying the application or the patent granted.
4) Assignment of Patent: a contract that is intended to finally transfer ownership to third parties of the patent regularly filed or granted in Brazil, identifying the right, the application, or the patent granted.
5) Compulsory Patent License: it is a request for temporary suspension of the holder’s exclusive right to the patent filed or granted in Brazil, identifying the industrial property right, in compliance with articles 68 to 74 of Law No. 9,279 of 1996.
6) Industrial Design Exploitation License: a contract to authorize the exploitation by third parties, at a specific time, of the Industrial Design application and/or registration filed in Brazil, identifying the Industrial Design application and/or registration.
7) Assignment of Industrial Design: a contract that is intended to finally transfer ownership to third parties of the Industrial Design application and/or registration filed in Brazil, identifying the Industrial Design application and/or registration.
8) Integrated Circuit Topography License: a contract to authorize the exploitation by third parties, at a specific time, of the application and/or registration of Integrated Circuit Topography filed and/or granted in Brazil, identifying the Integrated Circuit Topography application and/or registration.
9) Assignment of Integrated Circuit Topography: a contract intended to finally transfer ownership to third parties of the application and/or registration of Integrated Circuit Topography filed and/or granted in Brazil, identifying the Integrated Circuit Topography application and/or registration.
10) Compulsory Integrated Circuit Topography License: it is a request for temporary suspension of the holder’s exclusive right to the Integrated Circuit Topography application and/or registration, identifying the Integrated Circuit Topography registration granted in Brazil, in compliance with articles 47 to 54 of Law No. 11,484 of 2007.
11) Franchise: it involves services, transfer of technology, and transmission of standards, in addition to the use of a trademark or patent. The franchisee shall prove knowledge of the Franchise Offering Circular, a document generated by the franchisor, pursuant to article 3 of the Brazilian Franchise Law (No. 8,955/1994). The Franchise Offering Circular should contain the company’s summary, balance sheets, and financial statements, profile of the “ideal franchisee”; status before the INPI of the trademarks and/or patents involved. The Franchise Offering Circular shall be delivered to the franchisee up to 10 days before signing the contract.
12) Technology Supply: a contract that establishes the conditions for acquisition of knowledge and techniques not backed by industrial property rights (know-how) filed or granted in Brazil. Licensing agreements for the use of software are included, provided that the source code is open, pursuant to article 11 of Law No. 9,609/98.
13) Technical and Scientific Support Services: contracts aiming at obtaining the techniques for creation of projects or studies and provision of certain specialized services.
As they do not characterize transfer of technology, under article 211 of Law No. 9,279/96, specialized technical services are exempt from registration by the INPI, according to the list of services contained in Resolution No. 156/2015.
Find out which documents are necessary to request the annotation/registration of contracts.
How to order the service
The application shall be made through the Electronic Technology Agreement Form – e-Contratos. For more information on the electronic application, please access the Electronic Technology Agreement Form Manual on step 4 of the Basic Guideline.
The e-Contratos System is available on the INPI’s website at https://gru.inpi.gov.br/contrato/.
How the annotation and/or registration process works
When filing a request of any nature at the INPI (annotation/registration of contract, invoice, petition, or enquiry), users receive a definitive numbering of their request, as specified in Resolution No. 135/2014.This request may be authorized (code 150 for notification of the Industrial Property Journal – RPI) or be considered non-existent (code 140 in the RPI).
Non-existent requests (code 140 in the RPI) are considered those which documents submitted by the user do not comply with the provisions defined by Normative Instruction (IN) No. 70/2017 and/or when the Brazilian Federal Revenue Collection Slip (GRU) regarding the payment of the fee for services is not aligned. In this case, users should file a new request, meeting the requirements for acknowledgement of the application.
The requirements approved (code 150 of notification of the RPI) follow for decision of the technical area of the INPI. The decision is published within 30 days of the day following the notification at the RPI. The decision of the technical area can be by approving, requesting submission of amendments, or even rejecting the requirements.
The approval of the requirements, which imply the issuance of the Certificate of Annotation, is notified at the RPI with code 350. The document issued by the INPI is available in digital media. To issue the certificates, please access Busca Web (“Web Search”).
Answers to queries made to the Contracts area are also notified at the RPI, using code 155, and are accompanied by a letter available in the Delivery system, through the Web Search.
Please note: As of RPI 2426 of July 4, 2017, all letters will be available only through the Web Search, for the login that filed the petition, in the e-Contratos system, or for the login of the requesting company in the Faça uma Busca (“Make a Search”), on INPI’s portal.
As of July 4, Photocopy requests will also no longer be delivered printed on paper, being made exclusively through the Peticionamento Eletrônico (“Electronic Petitioning”) system, and made available by Delivery for the login that issued the GRU, or for the login of the requesting company in Faça uma Busca (“Make a Search”), on INPI’s portal.
Requests that are subject to amendments are notified at the RPI through code 145 and the content of the amendments formulated by the INPI is informed to applicants by letters, which are virtually available through the Web Search.
The deadline for submission of amendments is 60 calendar days of the day following the date of publication of the notification of code 145 in the RPI. If the amendments are not submitted within the deadline (or if the applicant does not request for extension of the deadline for submission of the amendments), the requests are dismissed and notified with the publication of code 185 in the RPI.
Amendments may also be rejected by the INPI’s technical area for not complying with the rules and procedures in place, this decision being notified through code 130 in the case of annotation amendments and code 135 for any rejected petitions. In these cases, the interested party can appeal to the president of the INPI within 60 days, counted from the publication in the RPI, by means of a petition, clarifying the reasons that justify the disagreement about the decision.
The appeal is filed through code 210 at the RPI for the manifestation of third parties within up to 60 calendar days after the day following the date of publication. The appeal decision is notified, in turn, by code 272.
All statements of users (such as requests for extension of time, submission of amendments, appeals, presentation of addendum, and additional information) shall be made through an electronic petition filed in the e-Contratos system.
In case the request is granted, the certificate of annotation will be issued and notified by publication of code 350 in the Industrial Property Journal (RPI). The document issued by the INPI will be available in digital media. To access the certificates, please access Busca Web (“Web Search”).
Procedures by type of petition (services)
This item shows the types of petitions and their purposes:
1) Enquiries: petition for requesting prior analysis of contract, invoice, or addendum, or requesting clarification (click here for the detailed procedure)
2) Amendment to the Certificate/Addendum annotation: petition for amendment to a current certificate (applications that were published as records, new expiration date, etc.), or petition to send an Addendum (click here for the detailed procedure)
3) Amendment to the Certificate (registration data): petition for requesting changes to company data, contained in an existing certificate (click here for the detailed procedure)
4) Correction of the certificate due to INPI’s mistake: petition for requesting data correction, due to INPI’s mistake, in the current certificate (click here for the detailed procedure)
5) Appeal: petition for requesting the President of the INPI to appeal against a published decision (click here for the detailed procedure)
6) Certificate: petition for requesting an official response about the existing processes in which a company participates as a contractor (click here for the detailed procedure)
7) Copy of the Certificate: petition for requesting a copy of the certificate issued (click here for the detailed procedure)
8) Withdrawal of application/Dismissal of process: petition for requesting withdrawal of application that has not yet been certified, or for requesting dismissal of process with certificate (click here for the detailed procedure)
9) Submission of amendments: petition for sending information, documents, or procedures requested in the publication of amendment (click here for the detailed procedure)
10) Submission of amendments on appeal: petition for sending information and/or documents requested in the publication of amendment for appeals (click here for the detailed procedure)
11) Others: petition for any request that does not have a specific petition (click here for the detailed procedure)
12) Time limit extension for submission of amendments: petition for requesting time limit extension for submission of amendments, when it is not possible to submit them within 60 days (click here for the detailed procedure)
Payments of royalties for technical and scientific assistance abroad
The Certificate of Annotation/Registration issued by the INPI is necessary to perform the Electronic Declaratory Registry of Financial Transactions (RDE/ROF) of the Central Bank of Brazil through which payments are made abroad as royalties for the exploitation of industrial property rights and payments for know-how, technical and scientific assistance, and franchising (BACEN Resolution No. 3,844/2010).
The Record of Financial Transactions (ROF) is equivalent to the documents of registration of foreign capital issued by the Central Bank for all legal purposes, in particular Law No. 4,131/64 and Law No. 9,069/95. The inclusion of information by the user in this transaction has a declaratory character, and the user is responsible for its veracity and legality.
The operations of technology supply, technical assistance service, assignment of trademarks and patents, license to use trademarks and commercial exploitation of patents, franchises and complementary technical services provided by residents abroad, and other types of transfer of technology are subject to registration, provided they are contracted with residents or individuals domiciled abroad.
Advice on transfer of technology
INPI also provides an advisory service for Brazilian companies during acquisition of technology or to obtain licensing in Brazil and/or abroad, as follows:
Technological
1) By preparing studies and reports related to technology agreements – in the industrial and service sectors, based on the annotations made by the INPI – and offering them to the government and to interested parties, aiming at granting subsidies for the formulation of specific sectorial and governmental policies.
2) By preparing specific researches related to patents that may be available for purposes of licensing, and/or identifying, selecting, and indicating sources of technology supply (know-how), technical data, or specific technical support abroad, or in the national territory.
Contractual
1) By offering companies domiciled in Brazil data and advice by qualified technicians and with long experience of agreement analysis.
2) Collecting data and statistics regarding the form of negotiation and average prices adopted in licensing and technology transfer agreements in specific sectors, in the national and international markets.
Learn about INPI’s history in the area of Agreements
Questions?
You can answer your questions about the technical aspects of the contract through the Fale Conosco system.