Provides advice on IPR protection, including information on the registration of patents and trademarks
Last Published: 8/10/2017

Intellectual Property Rights (IPR) Climate in Brazil
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 (a reported average pendency of nearly two and a half years for trademarks and almost 11 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 U.S. 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 (*1) 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. Recently, the office launched a term-limited Patent Prosecution Highway Pilot Program with the U.S. Patent and Trademark Office.
 
(*1) 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.
 
For full economic implementation of technology transfer contracts in Brazil, they must be recorded with INPI. Such contracts are understood to include: licensing of rights (e.g., exploitation of patents and industrial designs, and the use of trademarks); acquisition of technological knowledge (e.g., supply of technology and provision of technical and scientific assistance); and franchising contracts.
 
Recording at INPI will facilitate the remittance of royalties to foreign countries, when applicable, and tax deductions for amounts paid as royalties by a local company. Registration also sets constructive public notice of the agreement. For more information see Articles 61, 62, 68, 121, 139, 140 and 211 of the IP Law, the Central Bank Circular Letter No. 2819/98, the Normative Act No. 135/7, and Decree No. 3.000/99.
 
Plant Varieties are regulated by Federal Law No. 9456 of April 25, 2007 (Plant Variety Protection Law). 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 protects 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 located outside of Brazil are able to access such patrimony if the activity is conducted in association with a Brazilian Research or Scientific Institution, regardless whether the institution is public or private.
 
Copyright 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 in order to have protection, but it is nevertheless helpful in the event a dispute arises, as 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 which 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. (*2) Trademark applications are analyzed on a first-to-file basis, taking into consideration any claimed priority, including Paris Convention priority. (*3)
 
(*2) 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.
 
(*3) 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 it is recommended for foreign GI owners as a registration will provide GI owners with relevant documentation in the event that a dispute arises in Brazil.
 
Enforcement
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” - 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.
 
In the Federal sphere, three different agencies are directly involved with IPR enforcement work:
 

  • Customs authorities, which fall under the Federal Revenue Service (“Receita Federal do Brasil”) – Contacts in each State can be found at 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 and
  •  Federal Highway Police (“Polícia Rodoviária Federal”) – Contacts in different regions can be found by visiting the Federal Highway Police website.

 
Additionally, various states in Brazil have Civil Police Units that are dedicated to IPR enforcement. As examples:
 

Government Organizations with Responsibility for IP and Technology Transfer Contract Registration in Brazil
INPI is the government organization with primary responsibility for patent, trademark, GI, and computer program registration, and registration of technology transfer agreements. Registration 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 Copyrights

 
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 United States. 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 in a particular country depends on the national laws of that country. However, most countries 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 U.S., 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 IP 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 right 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 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 right holders have not taken such fundamental steps necessary to securing and enforcing their IP in a timely fashion. Moreover, in many countries, right 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 seen as a substitute for the obligation of a right holder to promptly pursue its 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 IP 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:

IP Resources 
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
 

  • 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 StopFakes website 
  • For more information about registering trademarks and obtaining patents (both in the U.S. as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at: 1-800-786-9199
  • For more information about registering for copyright protection in the U.S., contact the U.S. Copyright Office at: 1-202-707-5959.
  • 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.  
  • rights and market-specific IP Toolkits, visit the STOPfakes website. The toolkits contain detailed information on protecting and enforcing IP in specific markets and also contain contact information for local IPR offices abroad and U.S. government officials available to assist SMEs.  For information on obtaining and enforcing intellectual property

The U.S. Commerce Department has positioned IP attachés in key markets around the world. You may obtain the information for the IP Attaché in Brazil or see the end of this section.
 
In any foreign market companies should consider several general principles for effective management of their intellectual property. For background on these principles please link to our article on Protecting Intellectual Property and also Corruption.

IP Attaché Contact:
Laura Hammel
U.S. Consulate General, Rio de Janeiro, Brazil
+55 21-3823-2499 laura.hammel@trade.gov

Prepared by our U.S. Embassies abroad. With its network of 108 offices across the United States and in more than 75 countries, the U.S. Commercial Service of the U.S. Department of Commerce utilizes its global presence and international marketing expertise to help U.S. companies sell their products and services worldwide. Locate the U.S. Commercial Service trade specialist in the U.S. nearest you by visiting http://export.gov/usoffices.



Brazil Economic Development and Investment Law