INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - BRAZIL

Industrial Property Law - Law N� 9.279, of May 14, 1996

Regulating Industrial Property Rights and Obligations

THE PRESIDENT OF THE REPUBLIC

Be it known that the National Congress has decreed and I sanction the following law:

PRELIMINARY PROVISIONS

Article 1 - This law regulates rights and obligations relating to industrial property.

Article 2 - In view of the interest of society and the technological and economic development of the country, the protection of rights relating to industrial property shall be assured by means of:

I - the grant of patents for inventions and for utility models;

II - the grant of industrial design registrations ;

III - the grant of trademark registrations;

IV - the repression of false geographical indications; and

V - the repression of unfair competition.

Article 3 - The provisions of this law shall apply to:

I - applications for patents or registrations originating abroad and filed in the country by a person holding protection under a treaty or convention in force in Brazil; and

II - nationals of or persons domiciled in a country that affords by way of reciprocity the same or equivalent rights to Brazilians or persons domiciled in Brazil.

Article 4 - The provisions of treaties in force in Brazil shall apply under the same conditions, to natural and legal persons who are nationals of or domiciled in Brazil

Article 5 - For all legal effects, industrial property rights shall be deemed movable property.

TITLE I: PATENTS

CHAPTER I: OWNERSHIP

Article 6 - The author of an invention or of a utility model shall be afforded the right to obtain a patent securing him the property therein, under the terms set out by this Law.

Paragraph 1 - Unless otherwise proven the applicant shall be presumed be entitled to obtain a patent.

Paragraph 2 - The patent may be applied for by its author, his heirs or successors in title, by an assignee or by any person designated the owner by law or by an employment contract or by a contract of service.

Paragraph 3 - If an invention or utility model is created jointly by two or more persons, a patent may be applied for by all or one of such persons, giving the name and particulars of the others, in order to safeguard their rights

Paragraph 4 - The inventor shall be named and his particulars given, but he may request that his name should not be disclosed.

Article 7 - If two or more authors created the same invention or utility model, independently of each other, the right to obtain a patent shall belong to the person proving the earliest filing date, irrespective of the dates of invention or creation.

Sole Paragraph - The withdrawal of an earlier filing that has not had any effect shall give priority to the filing that immediately follows.

CHAPTER II: PATENTABILITY

Section I: Patentable Inventions and Utility Models

Article 8 - An invention shall be patentable if it meets the requirements of novelty, inventive step and industrial application.

Article 9 - An object of practical use, or part thereof, shall be patentable as utility model if it is susceptible of industrial application, presents a new shape or arrangement and involves inventive step, resulting in functional improvement in its use or manufacture.

Article 10 - The following shall not be considered inventions or utility models:

I - discoveries, scientific theories and mathematical models;

II - purely abstract concepts;

III - schemes, plans, principles or methods of a commercial, accounting, financial, educational, or advertising nature or for games of chance or surveillance;

IV - literary, architectural, artistic and scientific works or any aesthetic creation;

V - computer programs per se;

VI - presentations of information;

VII - rules for games;

VIII - techniques and methods for operations or surgery or methods for therapy or diagnosis applied to human or animal body; and

IX - all or part of natural living beings and biological materials found in nature, or isolated therefrom, including the genome or germ plasm of any natural living being and the natural biological processes.

Article 11 - An invention or utility model shall be considered to be new if it does not form part of the state-of -the-art.

Paragraph 1 - State-of-the-art shall be held to comprise everything made available to the public, by means of a written or oral description, by use, or in any other way, before the filing date of the patent application, in Brazil and abroad, except as provided for in articles 12, 16 and 17.

Paragraph 2 - For the purposes of determining novelty, the full contents of an application filed in Brazil, but not yet published, shall be deemed comprised in the state-of-the-art as from the date of filing or of claimed priority, provided that published, even if subsequently.

Paragraph 3 - The provisions of the preceding paragraph shall apply to an international patent application filed in accordance with the provisions of a treaty or convention in force in Brazil, provided that there is national processing.

Article 12 - The disclosure of an invention or utility model occurring during the 12 (twelve) months preceding the filing date, or priority date, of the application shall not be considered to be comprised in the state if the art if made:

I - by the inventor;

II - by the National Institute of Industrial Property (Instituto Nacional de Propriedade Industrial) INPI, through official publication of an application filed without the consent of the inventor, based on information obtained from the inventor or as a result of his acts; or

II - by third parties on the basis of information obtained directly or indirectly from the inventor or as a result of his acts.

Sole Paragraph - INPI may require from the inventor a statement relating to the disclosure, accompanied or not by evidence, under the conditions established in the regulations.

Article 13 - An invention shall be considered as involving an inventive step if, for a person skilled in the art, it does not result patently or obviously from the state-of-the-art.

Article 14 - An utility model shall be considered as involving an inventive step if for a person skilled in the art, it does not result commonly or usually from the state-of-the-art

Article 15 - Inventions or utility models shall be considered as susceptible of industrial application if they can be used or made in any kind of industry.

Section II: Priority

Article 16 - A patent application filed in a country that has an agreement with Brazil or filed with an international organization, having the effect of a national filing, shall enjoy a priority right within the time limits established in the agreement, and shall not be invalidated or prejudiced by events occurring within such time limits.

Paragraph 1 - A claim to priority shall be made at the time of filing, and may be supplemented within 60 (sixty) days by other priorities that are earlier than the date of the filing in Brazil.

Paragraph 2 - A claim to priority shall be supported by a valid document of origin, stating number, date, title, description and, where appropriate, claims and drawings, accompanied by an uncertified translation of the filing certificate or equivalent document, containing data identifying the application, the contents of which shall be at the entire responsibility of the applicant.

Paragraph 3 - If not submitted at the time of filing, the evidence shall be submitted within 180 (one hundred and eighty) days of the filing date.

Paragraph 4 - For international applications filed under a treaty in force in Brazil, the translation referred to in paragraph 2 shall be filed within 60 (sixty) days from the date of entry into the national phase.

Paragraph 5 - If an application filed in Brazil is faithfully reproduced in the document of origin, a statement to such effect by the applicant shall suffice to replace the uncertified translation.

Paragraph 6 - Where priority is obtained by assignment, the corresponding document shall be filed within 180 (one hundred and eighty ) days of the filing date or within 60 (sixty) days of the date of entry into the national phase, where appropriate, whereby consular legalization in the country of origin shall not be required.

Paragraph 7 - Failure to provide evidence within the time limits provided for in this article shall result in loss of the priority.

Paragraph 8 - Where an application has been filed with a claim to priority, any request for early publication shall be accompanied by evidence of the priority.

Article 17 - An application for a patent for an invention or a utility model originally filed in Brazil, without claiming priority and not yet published, shall afford a right of priority with respect to a subsequent application for the same subject matter filed in Brazil by the same applicant of his successor in title, within a period of one year.

Paragraph 1 - Priority shall be enjoyed only by a subject matter disclosed in the earlier application, and shall not be extended to any new matter introduced.

Paragraph 2 - The pending earlier application shall be deemed to have been definitively withdrawn.

Paragraph 3 - An application resulting from the division of an earlier application may not serve as the basis for claiming priority.

Section III: Non-Patentable Inventions and Utility Models

Article 18 - The following shall not be patentable:

I - anything contrary to morality, decency or public safety, order and public health;

II - substances, materials, compounds, elements or products of any kind, including the modification of their respective physical-chemical properties and the respective processes for obtaining or modifying them, when they result from the transformation of the atomic nucleus; and

II - living beings, whole or in part, except for transgenic microorganisms meeting the three requirements of patentability - novelty, inventive step and industrial application - provided for in article 8 and which are not mere discoveries.

Sole Paragraph - For the purposes of this law, transgenic microorganisms are organisms, except for plants or animals, whole or part, that due to direct human intervention in their genetic composition, express a characteristic that cannot be normally achieved by the species under natural conditions.

CHAPTER III: PATENT APPLICATIONS

Section I: Filing of Applications

Article 19 - Patent applications, shall contain, in accordance with the conditions laid down by INPI;

I - a request;

II - description;

III - claims;

IV - drawings, if any;

V - an abstract;

VI - proof of payment of the filing fee.

Article 20 - Once it has been submitted, the application shall be subject to a formal preliminary examination and if found in order, shall be recorded and the date of submission shall be the filing date.

Article 21 - An application that does not meet the requirements of Article 19, but which contains data relating to the object, the applicant and the inventor, may be submitted to INPI in return for a dated receipt setting out the requirements to be met, within a period of 30 (thirty) days, failing which the documentation shall be returned or deemed withdrawn.

Sole Paragraph - Once the requirements have been met, the filing shall be considered to have been made on the date of receipt.

Section II: Requirements of Applications

Article 22 An application for a patent for an invention shall relate to one invention or to a group of inventions so linked as to form a single inventive concept.

Article 23 - An application for a patent for a utility model shall relate to a principal model, which may include a plurality of distinct additional elements or variations of structure or configurations, provided that the technical-functional and material unity of the object is maintained.

Article 24 The description shall clearly and sufficiently describe the object, thus enabling the object to be carried out by a person skilled in the art and shall, where appropriate, indicate the best manner of execution.

Sole Paragraph - In case of biological material essential for carrying out the object of the application, which cannot be described in accordance with this article and which is not accessible to the public, the description shall be supplemented by the deposit of the material with an institution authorized by INPI or referred to in an international agreement.

Article 25 - The claims shall be supported by the description, shall characterize the special features of the application, and shall clearly and precisely define the subject matter for which protection is sought.

Article 26 - An application may be divided in two or more applications ex officio, or at the request of the applicant, up to termination of the examination, provided that the divisional application:

I - makes specific reference to the original application; and

II - does not extend beyond the subject matter disclosed in the original application.

Sole Paragraph - A request for division that does not comply with the provisions of this article shall be deemed withdrawn.

Article 27 - Divisional applications shall enjoy the filing date of the original application and, where applicable, shall have the benefit of any priority enjoyed by the original application.

Article 28 - Each divisional application shall be subject to the payment of the corresponding fees.

Article 29 - A patent application that is withdrawn or abandoned must be published.

Paragraph 1 - Requests for withdrawal shall be filed within 16 (sixteen) months from the date of filing or of earliest priority.

Paragraph 2 - Withdrawal of an earlier application that has not produced any effect shall lead to the assignment of priority to the earliest subsequent application.

Section III: Prosecution and Examination of Applications

Article 30 - Applications for a patents shall be kept secret for a period of 18 (eighteen months) as from the date of the filing or earlier priority, if any, following which, they shall be published, except as provided for in Article 75

Paragraph 1 - Early publication may be effected at the request of the applicant.

Paragraph 2 - Publication shall include data identifying the application, a copy of the description, the claims, the abstract and drawings shall be available to the public at INPI.

Paragraph 3 - In the case referred to in the Sole Paragraph of Article 24, the biological material shall be made available to the public at the time of the publication to which this Article refers.

Article 31 - Documents and information intended to assist the examination may be filed by the interested persons between publication of the application and completion of the examination.

Sole Paragraph - Examination shall not begin earlier than 60 (sixty) days after publication of the application.

Article 32 - An applicant may make amendments to clarify or better define his application up to the time of the request for examination, provided that amendments do not go beyond the subject matter initially disclosed in the application.

Article 33 - Examination of an application for a patent shall be requested by the applicant or by any interested person, within 36 (thirty six) months as from the filing date, failing which the application shall be deemed withdrawn.

Sole Paragraph - The application for a patent may be reinstated, at the request of the applicant, within 60 (sixty) days as from having been deemed withdrawn and upon payment of a specific fee, failing which the application shall be deemed definitively withdrawn.

Article 34 - Once examination has been requested, the following documents shall be filed within 60 days, whenever requested, failing which the application shall be deemed withdrawn:

I - objections, earlier filing and results of examination of corresponding applications in other countries, where priority is claimed;

II - documents required to regularize the procedure and examination of the application; and

III - a uncertified translation of the recognized document referred to in paragraph 2 of article 16, in those cases where the translation has been replaced by the statement referred to in paragraph 5 of that Article.

Article 35 - During the technical examination a search report and an opinion shall be prepared with respect to:

I - the patentability of the application;

II - suitability of the application to claimed nature;

III - amendment or division of the application; or

IV - technical requirements.

Article 36 - Where the opinion ascertains the non-patentability of the application or the non-suitability of the application to claimed nature or if the opinion sets any conditions, the applicant shall be invited to submit comments on the issues within a period of 90 (ninety) days.

Paragraph 1 - If there is no reply to a condition the application shall be deemed definitively withdrawn.

Paragraph 2 - If there is a reply to a condition, even if the conditions is not complied with, or if its formulation is contested, the examination shall be continued irrespective of the submission or arguments concerning patentability or suitability.

Article 37 - On conclusion of the examination a decision to allow or deny the application shall be issued.

CHAPTER IV: GRANT AND TERM OF PATENT

Section I: Grant of Patent

Article 38 - A patent shall be granted once the application is allowed and, after proof of payment of the corresponding fee is furnished, the respective patent certificate shall be issued.

Paragraph 1 - Payment of the fee and furnishing of proof of payment shall be made within 60 (sixty) days from the date of the formal allowance of the application.

Paragraph 2 - The fee provided for in this Article may also be paid and evidence of payment provided within 30 (thirty) days from the time limit referred to in the preceding paragraph, irrespective of any notification, on payment of a specific fee, failing which the application shall be deemed definitively withdrawn.

Paragraph 3 - A patent shall be deemed granted as from the date of publication of the relevant decision.

Article 39 - The patent certificate shall contain the relevant number, title and nature, inventor name, in accordance with provisions of Article 6 (4), and the particulars and place of residence of the patentee, the term of validity, description, the claims and the drawings, and also any data relating to priority.

Section II: Term of Patent

Article 40 - The term of a patent for an invention shall be 20 (twenty) years and for a utility model 15 (fifteen) years as from the filing date.

Sole Paragraph - The term shall not be less than 10 (ten) years for inventions and 7 (seven) years for utility models, as from the date of grant, except where INPI is prevented from carrying out the substantive examination of the application due to pending litigation or for reasons beyond its control.

CHAPTER V: PROTECTION CONFERRED BY PATENT

Section I: Rights

Article 41 - The scope of the protection conferred by the patent shall be determined by the terms of the claims as interpreted on the basis of the description and the drawings.

Article 42 - A patent shall afford to its owner the right to prevent others from producing, using, offering for sale or importing for such purposes without his consent:

I - a product that is the subject matter of a patent;

II - the process or product directly obtained by a patented process.

Paragraph 1 - The owner of a patent shall further enjoy the right to prevent others from assisting other parties in carrying out the acts referred to in this Article.

Paragraph 2 - The rights in a process patent shall be deemed to have been infringed, insofar as item II is concerned, if the holder or owner of a product fails to prove, by a specific judicial ruling, that his product was obtained by a manufacturing process different from the process protected by the patent.

Article 43 - The provisions of the previous article shall not apply:

I - to acts carried out privately and without commercial purposes by unauthorized third parties, provided that these acts do not prejudice the economic interests of the patent owner.

II - to acts carried out by unauthorized third parties for experimental purposes, if related to studies or scientific or technological researches.

III - to the preparation of a medicine in accordance with a medical prescription in individual cases, and carried out by a qualified professional, or the medicine thus prepared.

IV - to a product manufactured in accordance with a process or product patent that has been placed on the internal market directly by the patent holder or with his consent.

V - to other persons who, in the case of patents related to living matter, use the patented product, without economic purpose, as an initial source of variation or propagation in order to obtain other products, and

VI - other persons who, in case of patents related to living matter, use, place in circulation, or market a patented product that has been lawfully placed on the market by the owner of the patent or his licensee, provided that the patented product is not used for the commercial multiplication or propagation of the living matter concerned.

Article 44 - A patent owner shall be entitled to compensation for unauthorized exploitation of the subject matter of his patent, including exploitation that occurs between the date of publication of the application and the date of grant of the patent.

Paragraph 1 - If an infringer becomes aware, by any means, of the content of a filed application prior to the publication, the period of unlawful exploitation taken into account for compensation shall run as from the date in which the exploitation began.

Paragraph 2 - If the subject matter of a patent application relates to biological material, deposited according to provisions of the Sole Paragraph of Article 24, the right to compensation shall be granted only when the biological material has been made available to the public.

Paragraph 3 - The right to compensation for unlawful exploitation, including in the period prior the grant of a patent, shall be limited to the subject matter of the patent, as provided for in article 41.

Section II: Prior User

Article 45 - A person who in good faith, prior to the filing or priority date of a patent application, used to exploit the subject matter thereof within the Country, shall be entitled to continue such exploitation under the same form and conditions, without liability.

Paragraph 1 - The right afforded by this Article may only be assigned together with the enterprise or part thereof that is directly related to the exploitation of the subject matter of the patent, by sale or lease.

Paragraph 2 - The right afforded by this Article shall not be enjoyed by a person who obtained knowledge of the subject matter of the patent as a result of disclosure, in accordance with Article 12, provided that the application was filed within 1 (one) year of the disclosure.

CHAPTER VI: NULLITY OF PATENT

Section I: General Provisions

Article 46 - A patent granted contrary to the provisions of this Law shall be null and void.

Article 47 - Nullity may apply to part of the claims only on condition for partial nullity that the remaining claims constitute subject matter patentable in themselves.

Article 48 - Nullity of a patent shall produce effect as from the filing date of the application.

Article 49 Where the provisions of Article 6 have not been complied with, the inventor, may, alternatively institute proceedings to claim the ownership of the patent.