Types of agreements

Trademark License (TL) Agreement

Definition: The trademark license agreement is intended to authorize the effective use, by third parties, of a trademark regularly filed or registered with the National Institute of Industrial Property – INPI, and shall comply with the provisions of Articles 139, 140, and 141 of Law No. 9,279/96 (Brazilian IP Law (LPI)).

Object: Trademark License agreements shall indicate the number of the registered trademark or the application for registration of the trademark filed with the INPI, the conditions related to the exclusivity or not of the license, and whether there is permission to sublicense the trademark.

Amount: In agreements involving trademarks, the payment conditions negotiated are the percentage levied on the net selling price of the products or net revenue earned by the services covered by the agreement; fixed amount per unit sold or fixed amount. Compensation is only possible through registration of the trademark issued by INPI. Applications of trademarks shall not be entitled to compensation. When the application becomes a registration, the applicant shall request INPI to change the Annotation Certificate, and the compensation shall retrofit the date of publication of the approval of the registration of the trademark in the Industrial Property Journal (RPI).

Term: The term of the license may not exceed the term of the registered trademarks to be licensed. The agreement and/or addendum shall be in force at the time of submission of the annotation request to INPI.

The agreement is subject to renewal by means of the Contract Addendum, signed by the parties within the term of the agreement. The addendum shall be submitted before expiration of the contract term in the Annotation Certificate. If the agreement has an automatic term extension clause, the request shall be filed through a petition for Amendment to the Annotation Certificate, still within the term of the Annotation Certificate, and preferably with the presentation of an Explanatory Letter describing what is being requested.

Assignment of Trademark (AT)

Definition: Agreements that aim at the assignment of a registered trademark or application for registration filed with INPI, entailing the change in ownership, and shall comply with the provisions of Articles 134 to 138 of Law No. 9,279/96 (LPI).

In order to request the annotation of a trademark assignment agreement, it is necessary that the trademark is regularly filed or registered with INPI, and also that the holder has requested the Directorate of Trademarks, Industrial Designs and Geographical Indications to change the ownership of the application for registration or the registered trademark. The number of the petition for change in ownership with INPI can be informed in the explanatory letter of the annotation request.

Object: The Trademark Assignment agreements shall indicate the number of the registered trademark or the application for registration of the trademark filed with the INPI.

Amount: The compensation in the agreement of assignment of application for registration of the trademark and registered trademark is established by fixed amount, as negotiated between the parties to the agreement.

Term: The agreements are annotated by the term disclosed in the agreement.

License for Commercial Exploitation of Patents (EP)

Definition: Agreements that aim at the license to commercially exploit the patent or patent application filed with INPI by the patentee or the applicant, and shall comply with the provisions of Articles 61, 62, and 63 of Law No. 9,279/96 (LPI).

Object: Patent Licensing agreements shall indicate the number of the application or patent filed or granted by INPI, the title of the patent, the conditions related to the exclusivity or not of the license, and permission to sublicense the patent.

Amount: In agreements involving trademarks, the payment conditions negotiated are the percentage levied on the net selling price of the products under the agreement, fixed amount per unit sold, or fixed amount. Patent applications pending will have their remuneration suspended until the patent is granted.  When the patent is granted, the company shall request INPI to change the Annotation Certificate, retroacting the remuneration to the date of the beginning of the term of the agreement or the amendment with INPI.

Term: The term of the license may not exceed the term of the patents to be licensed. The agreement and/or addendum shall be in force at the time of submission of the annotation request to INPI.

The agreement is subject to renewal by means of the Contract Addendum, signed by the parties within the term of the agreement. The addendum shall be submitted before expiration of the agreement term in the Annotation Certificate. If the agreement has an automatic term extension clause, the request shall be filed through a petition for Amendment to the Annotation Certificate, still within the term of the Annotation Certificate, and preferably with the presentation of an Explanatory Letter describing what is being requested.

Assignment of Patent (AP)

Definition: Agreements that aim at the assignment of patent or patent application filed with INPI, entailing the change in ownership, and shall comply with the provisions of Articles 58 to 59 of Law No. 9,279/96 (LPI).

In order to request the annotation of a patent assignment agreement, it is necessary that the patent is regularly filed or registered with INPI, and also that the holder has requested the Directorate of Patents, Software and Integrated Circuits Topography to change the ownership of the patent or the patent application. The number of the petition for change in ownership with INPI can be informed in the explanatory letter of the annotation request.

Object: The Patent Assignment agreements shall indicate the number and the holder of the patent or the patent application filed with INPI.

Amount: The compensation in the agreement of assignment of patent application and patent is established by fixed amount, as negotiated between the parties to the agreement.

Term: The agreements are annotated by the term disclosed in the agreement.

License for Commercial Exploitation of Industrial Design (EID)

Definition: Agreements that aim at the license to commercially exploit the industrial design filed and/or application filed with INPI, and shall comply with the provisions of Article 121 of Law No. 9,279/96 (LPI).

Object: The Industrial Design Licensing agreements shall indicate the application number or the number of registration of the industrial design, the conditions related to the exclusivity or not of the license, and permission to sublicense the industrial design.

Amount: In agreements involving industrial design, the payment conditions usually negotiated are the percentage levied on the net selling price of the products under the agreement and fixed amount per unit sold. Industrial design applications will have their remuneration suspended until the registration of the industrial design. When the industrial design is registered, the company shall request INPI to change the Annotation Certificate, retroacting the remuneration to the date of the beginning of the term of the agreement or the amendment with INPI.

Term: The agreements are registered no later than in the term of the industrial design registrations to be licensed. The agreement and/or addendum shall be in force at the time of submission of the annotation request to INPI.

The agreement is subject to renewal by means of the Contract Addendum, signed by the parties within the term of the agreement. The addendum shall be submitted before expiration of the contract term in the Annotation Certificate. If the agreement has an automatic term extension clause, the request shall be filed through a petition for Amendment to the Annotation Certificate, still within the term of the Annotation Certificate, and preferably with the presentation of an Explanatory Letter describing what is being requested.

Assignment of Industrial Design (AID)

Definition: Agreements that aim at the assignment of industrial design or industrial design application filed with INPI, entailing the change in ownership, and shall comply with the provisions of Article 121 of Law No. 9,279/96 (LPI).

In order to request the annotation of an industrial design assignment agreement, it is necessary that the industrial design is regularly filed or registered with INPI, and also that the holder has requested the Directorate of Trademarks, Industrial Designs and Geographical Indications to change the ownership of the industrial design. The number of the petition for change in ownership with INPI can be informed in the explanatory letter of the annotation request.

Object: The Industrial Design Assignment agreements shall indicate the number of the application or registration of the industrial design with INPI.

Amount: The compensation in the contract of assignment of industrial design application and industrial design is established by fixed amount, as negotiated between the parties to the agreement.

Term: The agreements are annotated by the term disclosed in the agreement.

Compulsory Patent License

Definition: Compulsory license is the effective commercial exploitation, by third parties, of the object of patent duly granted by INPI, identifying the industrial property right, and shall comply with the provisions in articles 68 to 74 of Law No. 9,279/1996 (LPI), in addition to Decree No. 3,201 of October 6, 1999 and Decree No. 4,830 of September 4, 2003.

The holder shall be subject to having the patent compulsorily licensed, among other reasons listed in art. 68 of Law 9,279/96, due to the non-exploitation of the object of the patent in the Brazilian territory due to lack of manufacture or incomplete manufacture of the product. The compulsory license shall only be requested after three years the patent was granted.

This license may only be requested by a person with legitimate interest and who has technical and economic capacity to efficiently exploit the object of the patent and/or patent application.

The Compulsory License may be submitted in two ways:

a) Licenses of private interest can be presented for abuse of process or for economic abuse;

b) Public interest licenses are intended to meet national emergency situations or situations of public interest, provided that the patentee or its licensee does not meet this need. Compulsory, temporary, and non-exclusive license for exploitation of the patent, without prejudice to the rights of the respective holder, may be granted ex-officio.

Object: The Compulsory Patent License Application shall indicate the number and title of the patent, or of the patent application in case of public interest License, and the conditions related to the commercial exploitation of the privilege. The compulsory licenses shall always be granted without exclusive rights, and sublicensing is not allowed.

Amount: The most common compensation is a percentage of the net selling price, fixed amount per unit sold; technical assistance, by individualizing technicians and indicating daily rates.

Term: The agreements are annotated no later than in the term of the patents to be licensed.

The licensee shall begin to exploit the object of the patent within one year of receiving the license, and it is permitted to interrupt the exploitation for the same term, except for legitimate reasons. The holder may request revocation of the license whenever the term is not met.

Integrated Circuit Topography License (ICTL)

Definition: Agreements that aim at the license to commercially exploit the integrated circuit topography filed with INPI by the holder of the registration, and shall comply with the provisions in Articles 44 to 46 of Law No. 11,484 of May 31, 2007.

Object: The Integrated Circuit Topography Licensing agreements shall indicate the application number and/or number of registration filed with or granted by INPI, the conditions related to the exclusivity or not of the license, and whether there is permission to sublicense the integrated circuit topography.

Amount: In agreements involving integrated circuit topography, the payment conditions negotiated are the percentage levied on the net selling price of the products under the agreement, fixed amount per unit sold, or fixed amount. The integrated circuit topography applications will have their remuneration suspended until the granting of registration. When it is granted, the applicant shall request INPI to change the Annotation Certificate, retroacting the remuneration to the date of the beginning of the term of the contract or the amendment with INPI.

Term: The term of the license may not exceed the term of the integrated circuit topography to be licensed.

The agreement is subject to renewal by means of the Contract Addendum, signed by the parties within the term of the contract. The addendum shall be submitted before expiration of the contract term in the Annotation Certificate. If the agreement has an automatic term extension clause, the request shall be filed through a petition for Amendment to the Annotation Certificate, still within the term of the Annotation Certificate, and preferably with the presentation of an Explanatory Letter describing what is being requested.

Assignment of Integrated Circuit Topography (AICT)

Definition: Agreements that aim at the assignment of integrated circuit topography filed with INPI, entailing the change in ownership and which assignment may be in whole or in part, and shall comply with the provisions of Articles 41 to 43 of Law No. 11,484/2007.

In order to request the annotation of an integrated circuit topography assignment agreement, it is necessary to register it with INPI, and also that the holder has requested the Directorate of Patents, Software and Integrated Circuits Topography to change the ownership of the integrated circuit topography. The number of the petition for change in ownership with INPI can be informed in the explanatory letter of the annotation request.

Object: The Integrated Circuit Topography Assignment agreements shall indicate the number of the integrated circuit topography filed with or granted by INPI.

Amount: The compensation in the contract of assignment of application or registration of integrated circuit topography is established by fixed amount, as negotiated between the parties to the contract.

Term: The agreements are annotated by the term disclosed in the agreement.

Compulsory Integrated Circuit Topography License

Definition: Agreements that aim at a temporary suspension of the exclusive right of the holder of an application or registration of integrated circuit topography filed or registered with INPI, and shall comply with the provisions in Articles 47 to 54 of Law No. 11,484/2007.

Compulsory licenses may be granted to ensure free competition or to prevent abuse of process or economic abuse by the holder of the right, including failure to serve the market regarding the price, quantity, or quality. The license shall be non-exclusive and non-transferable.

This license may only be requested by a person with legitimate interest and who has technical and economic capacity to efficiently exploit the object of the integrated circuit topography and/or integrated circuit topography application.

Object: These agreements shall indicate the filling number with INPI. The compulsory license application shall be prepared as to indicate the conditions offered to the patent owner.

Amount: the holder shall be properly compensated according to the circumstances of each use, taking mandatorily into account in the arbitration of this compensation, the economic value of the license granted.

Term: The agreements are registered no later than in the term of the integrated circuit topography to be licensed.

Supply of Technology (ST)

Definition: the technology supply agreement aims at acquiring knowledge and techniques not backed by industrial property rights filed or granted in Brazil, and the agreement shall encompass the set of information and technical data to enable the manufacturing of products and/or processes.

Object: The agreements shall include an identification of products and/or processes or services in the economic activity sector defined in the corporate purpose of the assigning company, as well as the technology and implicit and explicit knowledge to be acquired by the assigning company.

Amount: The compensations and payment conditions are established pursuant to the contractual discussion, usually ascertained based on the percentage levied on the net selling price of the product resulting from the application of the technology; or fixed amount per unit sold, or fixed amount. In case of additional payment for the technical support provided, the agreement shall indicate the number of technicians involved and determine their respective daily rates.

Term: The agreements are registered pursuant to the term of the agreement. The agreement and/or addendum shall be in force at the time of submission of the registration request to INPI.

The agreement is subject to renewal by means of the Contract Addendum, signed by the parties within the term of the contract. The addendum shall be submitted before expiration of the contract term in the Registration Certificate. Additionally, it is necessary to demonstrate the acquirer’s capacity and the achievement of real results derived from the incorporation of the technology.

If the agreement has an automatic term extension clause, the request shall be filed through a petition for Amendment to the Registration Certificate, still within the term of the Registration Certificate, and preferably with the presentation of an Explanatory Letter describing what is being requested.

Provision of Technical and Scientific Support Services (TSS)

Definition: Agreements or invoices for provision of technical support services that stipulate the conditions for obtaining techniques, methods of planning and programming, as well as research, studies, and projects for the execution or provision of specialized services when related to the company’s main activity, as well as services provided on equipment and/or machines abroad, when accompanied by a Brazilian technician and/or generating any type of document, such as a report.

Some technical services do not characterize transfer of technology pursuant to Art. 211 of Law No. 9,279/96, so they are also exempted from registration with INPI. See the list of services in Resolution/INPI No. 156/2015.

The technical and scientific support service agreements that entail transfer of technology between parties domiciled in Brazil are subject to registration with INPI. The export agreements for technical and scientific support services are exempted from registration with INPI.

Object: The object of the agreement and the invoice of provision of technical and scientific support shall be related to the scope of services that entail transfer of technology, as they involve the direct transmission of knowledge and technical information.

The object of the contract shall be clearly detailed, defining the services to be provided.

Amount: In these agreements it is necessary to explain the cost according to the number of foreign technicians, the qualifications of the technicians; the number of hours/days worked by each technician, the daily rate (hourly/daily rate) detailed by type of technician, and the total amount of the service provided, even if estimated.

Example of compensation clause or annex:

For the services provided by the Assignor during the effectiveness of this agreement, the Assignee shall pay to the Assignor the amount of €81,900.00, as indicated in the chart below:

Term: The agreements are registered pursuant to the term expected for provision of the service or to the period for performing the services, pursuant to the agreement.

The agreement is subject to renewal by means of the Contract Addendum, signed by the parties within the term of the contract. The addendum shall be submitted before expiration of the contract term stated in the Registration Certificate. In cases of Amendments to the amount of the agreement, it is necessary to detail the additional amount, even if estimated, based on the number of technicians, their qualifications, the number of hours/days worked by each technician, the amount of the daily rates, and the total amount. In addition to informing the amounts already sent.

If the agreement has an automatic term extension clause, the request shall be filed through a petition for Amendment to the Registration Certificate, still within the term of the Registration Certificate, and preferably with the presentation of an Explanatory Letter describing what is being requested. 

Franchise (FRA)

Definition: Agreements for the temporary granting of a business model that involves the use of trademarks and/or commercial exploitation of patents, provision of technical support services, combined or not, with any other type of transfer of technology necessary to achieve its objective.  These agreements shall indicate the number(s) of the application(s) and/or registration(s) of industrial property rights filed with INPI, the detailed description of the franchise, and the general description of the business. Pursuant to Law No. 8,955/94 (Brazilian Franchise Law), the Franchise Offering Circular (COF) or a declaration of receipt of the Franchise Offering Circular shall also be submitted.

The Offering Circular, among other aspects mentioned in the Brazilian Franchise Law, shall contain, mandatorily, the following information: company summary; balance sheets and financial statements of the company; “ideal” franchisee profile; status before the INPI of the trademarks and patents involved. The Franchise Offering Circular shall be delivered to the franchisee ten days before signing the agreement.

The master franchise agreement comprises granting to the franchisee the right to sub-franchise the franchise system in specific areas. The sub-franchise agreement comprises the authorizations granted by the franchisor to a sub-franchisor to formalize a sub-franchise agreement.

 Object: The agreements shall list the applications filed or registered trademarks and/or the applications filed or patents granted by INPI, the conditions of exclusivity and sub-franchising, if there will be provision of services, as well as other aspects deemed necessary.

Amount: The remuneration established in the agreements usually stipulates the franchise fee (fixed amount paid at the beginning of the negotiation); royalty rate (percentage of net selling price); advertising fee (percentage of sales), in addition to other fees.

Term: The agreements are registered until the term of the registered trademarks and/or patents granted by INPI involved in the franchise.