Brazil - Market ChallengesBrazil - Market Challenges
Protecting Intellectual Property
Brazil has been on the U.S. Trade Representative’s Special 301 Watch List since 2007. This designation reflects significant concerns with respect to high levels of counterfeiting and piracy in Brazil, including internet piracy, as well as concerns regarding the long delays in the examination of patents and trademarks, i.e., a reported average pendency of approximately twenty months for trademarks (without opposition) and 10 years for patents.
Patents, Technology Transfer Contracts, Plant Variety Protection and Genetic Resources
Patents are regulated by Federal Law No. 9279 of May 14, 1996 (IP Law). Patent rights may only be acquired in Brazil through registration with the National Institute of Industrial Property (“Instituto Nacional de Propriedade Industrial” - INPI). U.S. patent rights are valid only in the United States and thus are not recognized in Brazil. Patent applications are analyzed on a first-to-file basis, regardless of the date of creation or invention. A minor exception applies (*). Priority under the Paris Convention may be claimed, and the Patent Cooperation Treaty system may be used. INPI has various programs for expediting the prosecution of patents, including a term-limited Patent Prosecution Highway Pilot Program with the U.S. Patent and Trademark Office.
(*) Article 45 - A person who, in good faith, prior to the date of filing or the date of priority of a patent application, exploits its object in this country, will be guaranteed, without onus, the right to continue the exploitation (…). [generally known as prior user rights]
Pharmaceutical products and procedures need to receive prior consent by the Brazilian Heath Surveillance Agency (“Agência Nacional de Vigilância Sanitária” - ANVISA) before their respective patents can be granted. In April 2017, ANVISA and INPI signed Joint Regulation No. 1, which should help expedite the processing of these applications.
For full economic implementation of technology transfer contracts in Brazil, they must be recorded with INPI. Such contracts are understood to include:
- the licensing of rights (e.g., exploitation of patents and industrial designs, and the use of trademarks);
- the acquisition of technological knowledge (e.g., supply of technology and provision of technical and scientific assistance); and
- franchising contracts.
Plant Varieties are regulated by Federal Law No. 9456 of April 25, 2007 (Plant Variety Protection Law: https://www.planalto.gov.br/ccivil_03/Leis/L9456.htm). Plant Variety Protection is acquired by means of its registration before the National Service of Plant Variety Protection (“Serviço Nacional de Proteção de Cultivares” - SNPC).
Finally, Brazil provides a separate framework of protection for genetic resources under Act No. 13.123/15. Under the Act, a Genetic Heritage Management Council (CGen) is responsible with overseeing access to genetic heritage and associated traditional knowledge. Foreign individuals are not permitted to access the Brazilian Genetic Patrimony and Traditional Knowledge database. However, foreign businesses with headquarters outside of Brazil can access such patrimony if the activity is conducted with a Brazilian Research or Scientific Institution, regardless whether the institution is public or private. Some patent applications submitted before INPI may require certification from CGen if it is determined to be derived from Brazilian genetic resources.
Copyrights and Computer Software
Copyrights, including authors’ rights and neighboring rights, are regulated by Federal Law No. 9610 of February 19, 1998 (Copyright Law). Copyright registration is not required to have protection, but it is still helpful in the event a dispute arises, because a registration certificate will allow a presumption of authorship if there is no evidence to the contrary.
Computer software or computer programs are regulated by Federal Law No. 9609 of February 19, 1998 (Computer Software Law), Federal Law No. 9610 of February 19, 1998 (Copyright Law), and the IP Law, when applicable.
According to this law, software may be registered at INPI. Registration is not mandatory, but obtaining it will provide software creators with relevant documentation and proof of ownership during disputes. Also, authorship is presumed for registered software, requiring a showing of evidence to the contrary.
The portions of the program and other data that characterize the software as an independent creation and which are displayed in the application, are confidential in nature. INPI is required to maintain such information in confidence unless required to disclose by court order or at the author´s request.
Trademarks and Geographical Indications
Trademarks are regulated in Brazil by the IP Law (Federal Law No. 9279 of May 14, 1996). Trademark rights may only be acquired in Brazil through registration with INPI. Trademark applications are analyzed on a first-to-file basis, taking into consideration any claimed priority, including Paris Convention priority (*).
(*) Article 125. A mark that is registered in Brazil and considered to be famous shall be assured special protection in all branches of activity. Article 126. The well-known mark within its branch of activity pursuant to Article 6bis(I) of the Paris Convention for Protection of Industrial Property enjoys special protection, regardless of whether it has already been filed or registered in Brazil. Article 127. The application for registration of a mark that has been filed in a country that maintains an agreement with Brazil or in an international organization, when such produces the effect of a national filing, shall be assured the right to priority, within the time limits established in the agreement, and the filing is neither invalidated nor prejudiced by events occurring within those time limits.
Geographical Indications (GIs) are also regulated by the IP Law. Registration is not mandatory, but is recommended for foreign GI owners. Registration will provide GI owners with relevant documentation if a dispute arises in Brazil.
In 2004, the Brazilian federal government established the National Council to Combat Piracy and Crimes against Intellectual Property (“Conselho Nacional de Combate à Pirataria e Delitos contra a Propriedade Intelectual” or CNCP), under the Ministry of Justice. The Council coordinates national action on the fight against IPR crimes and works in cooperation with representatives from both public and private sectors. For further information, please visit CNCP´s website at:
In the Federal sphere, three different agencies are directly involved with IPR enforcement work:
- Customs authorities fall under the Federal Revenue Service (“Receita Federal do Brasil”). Contacts in each State can be found by visiting the following website on “Unidades de Atendimento”:
- Federal Police (“Polícia Federal”) – Contacts in each State can be found by visiting the following website: http://www.pf.gov.br/institucional/pf-pelo-brasil; and
- Federal Highway Police (“Polícia Rodoviária Federal”) – Contacts in different regions can be found by visiting the Federal Highway Police website: https://www.prf.gov.br/portal/unidades-prf.
Brasília – DF
Coordination of Repression of Crimes Against Consumers, Taxes and Fraud – Division of Consumer Rights (“Coordenação de Repressão aos Crimes contra o Consumidor, Ordem Tributária e Fraudes (CORF) - Divisão de Crimes contra o Consumidor”)
EQN 204/205 - Asa Norte
Brasília, DF – Brazil
Tel: (55 61) 3245-7525
State of Rio de Janeiro
Police Unit of Repression of Crimes Against IP (“Delegacia de Repressão de Crimes Contra a Propriedade Imateral” – DRCPIM)
Av. Dom Helder Câmara, 2066
20910-061 - Rio de Janeiro, RJ – Brazil
Tel: (55 21) 2582-7466
State of Pernambuco
Police Unit for Crimes Against IP (“Delegacia de Crimes contra a Propriedade Imaterial”)
Rua Visconde de Suassuna, 164,
Boa Vista - Recife, PE – Brazil
Tel: (55 81) 3184-3384/3385/3386
Government Organizations with Responsibility for Intellectual Property and Technology Transfer Contract Registration in Brazil
INPI is the government organization with primary responsibility for patent, trademark, GI, and computer program registration, and recordation of technology transfer agreements. Recordation of trademark licenses also is required in certain situations. Plant variety protection is obtained at the National Service of Plant Variety Protection. Multiple organizations are responsible for copyright registration, depending on the nature of the work.
- For Patents, Trademarks, GIs, Computer Programs. and Technology Transfer Contracts
Rua São Bento 1
20090-010 - Rio de Janeiro, RJ – Brazil
Tel: (55 21) 3037-4000
- For Plant Varieties National Service of Plant Variety Protection (“Serviço Nacional de Proteção de Cultivares”)
Brasília, DF - Brazil
Tel: (55 61) 3218-2547 / 3218-2549
- For Copyrights
Rua da Imprensa nº 16, 12ºandar - sala 1205
20030-120 - Centro - Rio de Janeiro, RJ - Brazil
Tel: (55 21) 2220-0039 or (55 21) 2262-0017
- Musical Works
Largo da Lapa, 51 - Prédio II – 2º andar
20021-170 - Rio de Janeiro, RJ - Brazil
- Art Works
Av. Pedro Calmon, 550
Prédio da Reitoria - Cidade Universitária – sala 737
21941-901 - Ilha do Fundão - Rio de Janeiro, RJ - Brazil
Tel: (55 21) 3938-1649/1949
- Engineering, Architectural and Agronomical Works
SEPN Quadra 508, Bloco B – Ed. Adolfo Morales de Los Rios Filho
70740-542 Brasilia, DF - Brazil
Tel: (55 61) 3348-3700
Applications for registration shall be forwarded to CONFEA through its
Regional Councils (CREA).
Protecting Your IP in Brazil
Several general principles are important for effective management of intellectual property rights in Brazil. First, it is important to have an overall strategy to protect your IP. Second, IP is protected differently in Brazil than in the U.S. Third, rights must be secured and enforced in Brazil, under local laws. Your U.S. trademark registrations and patents will not protect you in Brazil. Similarly, there is no such thing as an “international copyright” that will automatically protect an author’s writings throughout the entire world. Protection against unauthorized use depends on the national laws of that country. However, most countries do offer copyright protection to foreign works under certain conditions, and these conditions have been greatly simplified by international copyright treaties and conventions.
Patents are considered on a first-to-file, first-in-right basis. Similarly, trademark registration is determined on a first-to-file (unlike the United States, where rights are based on first-to-use), first-in-right basis, so you should consider applying for trademark and patent protection even before selling your products or services in the Brazilian market. Copyright registration, while not required, provides evidence of authorship that will be needed in the event of a dispute. It is vital that companies understand that intellectual property is primarily a private right and that the U.S. Government cannot enforce rights for U.S. companies in Brazil. It is the responsibility of the rights holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in Brazilian law through their U.S. counsel (most U.S. trademark and patent lawyers maintain international networks of agents and attorneys in other countries). The U.S. Commercial Service in Brazil (http://www.export.gov/Brazil) also can provide a list of local lawyers upon request.
While the U.S. Government stands ready to assist, there is little we can do if the rights holders have not taken such fundamental steps necessary to securing and enforcing their IP in a timely fashion. Moreover, in many countries, rights holders, who delay enforcing their rights with the mistaken belief that the U.S. Government can provide a political resolution to a legal problem, may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should U.S. Government informational resources be a substitute for the obligation of a rights holder to promptly pursue their case.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Permitting your partner to register your IP rights on your behalf is generally inadvisable. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership sour or end. Keep an eye on your cost structure and reduce the margins (and the incentive) of such would-be bad actors. Projects and sales in Brazil require constant attention. Work with legal counsel familiar with Brazilian laws to create a solid contract that includes non-compete clauses, and confidentiality/non-disclosure provisions.
It is also recommended that small and medium-sized companies consider the importance of membership in and participation with intellectual property as well as industry-specific trade associations and organizations to support efforts to protect IP and stop piracy and counterfeiting. There are a number of these organizations, both Brazil and U.S.-based. These include:
- The United States Chamber of Commerce
- National Association of Manufacturers (NAM)
- International Intellectual Property Alliance (IIPA)
- International Trademark Association (INTA)
- The Coalition Against Counterfeiting and Piracy
http://www.theglobalipcenter.com (part of the U.S. Chamber)
- International Anti-Counterfeiting Coalition (IACC)
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- Biotechnology Industry Organization (BIO)
A wealth of information on protecting IP is freely available to U.S. rights holders. Below is a list of several reliable resources for companies regarding intellectual property:
- For information about patent, trademark, or copyright issues -- including enforcement issues in the U.S. and other countries -- call the STOP Hotline: 1-866-999-HALT or go to www.StopFakes.gov.
- For more information about registering trademarks and obtaining patents (both in the United States as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at: 1-800-786-9199 or visit http://www.uspto.gov/.
- For more information about registering for copyright protection in the U.S., contact the U.S. Copyright Office at: 1-202-707-5959 or visit http://www.copyright.gov/.
- For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, please visit the “Resources” section of the STOPfakes website.
- For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits, visit the STOPfakes website. The toolkits contain detailed information on protecting and enforcing IP in specific markets and contain contact information for local IPR offices abroad and U.S. Government officials available to assist SMEs.
The U.S. Commerce Department has positioned IP attachés in key markets around the world. You can find further information about the IP Attaché in Brazil at http://www.export.gov/Brazil/contactus/index.asp or at the end of this section. In any foreign market, companies should consider several general principles for effective protection of their intellectual property. For background, please link to our article on Protecting Intellectual Property and Stopfakes.gov for more resources.
IP Attaché Contact for Brazil
U.S. Consulate General, Rio de Janeiro, Brazil
Telephone: +55 (21) 3823-2499
Brazil Trade Development and Promotion