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INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - BRAZIL

Normative Ruling 126


 

Subject: Regulates the filing procedure referred to in arts. 230 and 231 of Law no 9.279/96.

 

THE PRESIDENT OF INPI pursuant to his legal authority,

WHEREAS Law No. 9.279 of May 14 1996, determines in article No. 243 that its articles 230 and 231 shall be promptly enforceable;

WHEREAS with regard to the grant of patents, among other, all provisions of Law No. 5772/71 shall remain in force for a period of one year as from the date of the new Law; and

WHEREAS the legal provisions referred to herein above are applicable also to pending applications filed while Law No. 5772/71 was still in force, and that the subject matter to which protection has been afforded may not have different dates of protection, for reason of the diversity of afforded privileges, based on a same and single filing,

RESOLVES:

1. To regulate the filing procedure referred to in articles 230 and 231 of Law No. 9.279/96 as follows:

FILING

2. All applications shall be submitted according to the provisions of article 14 of Law No. 5772/71, accompanied by an appropriate request, in accordance with the model attached hereto, and by a statement declaring that up to the date of the filing the subject matter of the application was not placed on any market at the direct initiative of the applicant or by another person with his consent.

2.1. If, at the time of filing in the Country a patent has already been granted to the initial filing abroad based on provisions of Article 230, on filing the applicant may submit the relevant documentation according to the provisions of item 11 herein.

3. In the case of an application that has already been filed in the Country, according to provisions of Law No. 5772/71, based on an initial application filed abroad that is still pending, with a view to compliance with the provisions of article 230, paragraph 5, a statement from the applicant relinquishing the pending application shall be admitted, and the documents included in that application shall be acceptable, without prejudice of the requirement of submission of the documents referred to in item 2 above.

3.1. If the application claims a subject matter which is different from the subject matter of the application or patent corresponding to the initial filing abroad, the applicant may submit amendments to adequate the new application conforming it to the initial application or to the patent.

3.2. Each application filed based on the provisions of article 230 shall have a single corresponding application filed or patent granted abroad; no original multiple priorities or filings shall be admitted and applications pending in the Country shall be adapted at the time of the new filing based on the provisions of the above mentioned article 230.

3.3. An Application filed based on the provisions of Article 70.8 of the Agreement on Aspects of Industrial Property related to trading (TRIP's) in accordance with provisions of Decree No. 1355 issued on 12.31.1994 may be modified as provided for in the preceding items.

4. International applications filed through the PCT based on a prior filing abroad, in which Brazil is designated or elected, may exercise the right and the faculty referred to in art 230, provided that the national phase has been started while article 230 was in force - independently of the date provided for in that treaty for such purpose - and that the provisions of this Normative Ruling with regard to filing requirements and documents are complied with.

4.1. Once the documentation is made available, the applicant shall submit it within a period of 90 (ninety) days.

5. If the application is filed by a national or by a person domiciled in the Country, the applicant shall submit a statement indicating the date of the disclosure of the invention, accompanied by supporting elements, if any, without prejudice of all other relevant documents referred to in item 2 herein.

6. For a single application or patent originally filed abroad, which includes a subject matter to which protection is afforded according to Law No. 5772/71 and a subject matter to which protection is afforded solely by the provisions of Article 230 of Law No. 9.279/96, a single filing shall be admitted, and the applicant, in case the option for Article 230 is made, where applicable, shall include in the new application all subject matters for which protection is requested.

6.1. The same provisions shall apply to inventions to which protection is afforded in accordance with the provisions of Article 231 Law No. 9.279/96.

 

PROSECUTION

7. The examination of pending applications containing a subject matter to which protection is afforded in accordance with provisions of Article 229 of Law No. 9.279/96 shall be suspended and the applicant who has no intention of exercising the faculty referred to in Article 230 paragraph 5 or Article 231, shall request that the examination of his application be resumed.

8. Once the requirements for filing provided for in Law No. 5772/71 and in this Normative Ruling are complied with, the application shall be deemed filed and shall be duly numbered with an alpha-numeric code, in which PI is the alphabetic part, followed by number 11 and five numeric digits in the consecutive order of filing and by a verifying digit.

9. The application shall be automatically published, and the 90 (ninety) day period shall start to run for third parties to submit comments on the placement of the subject matter of the application on the market or on serious and effective preparations for exploiting the subject matter in the country having been made.

9.1. If any comments are submitted, the applicant shall be notified and shall have a period of 90 (ninety) days to submit counter-claims.

10. An application filed in accordance with the provisions of article 231 shall be prosecuted and examined in accordance with the provisions of Law No. 9.279/96 as provided in Paragraph 2 of that Article.

11. As soon as the patent corresponding to the initial filing abroad is granted, the patent must be submitted to INPI accompanied by a uncertified translation of particulars, claims and statement of accuracy, as well as, where applicable, by a document evidencing the term of patent.

12. A request for the examination of the filing in the Country is not required.

13. During prosecution of an application INPI is entitled to issue conditions with a view to compliance with legal provisions or provisions in this Normative Ruling, which shall be complied within 90 (ninety) days as from the corresponding publication.

 

FEES

14. The provisions of Law No. 9.279/96 shall apply, and the date of filing shall be the date of the first application, subject to the payment of an annual fee as from the date of the filing in the Country.

14.1. If the patent granted for the first filing is not submitted to INPI, as provided for in item 12 above within 1 (one) year after the grant, annual filing fees payable regarding the filing in the Country shall be calculated as patent fees.

14.2. If INPI verifies that a patent has been granted abroad, where applicable INPI shall require that previous annual fees be supplemented to compensate under paid annual fees.

15. All fees shall be included in the Table applicable to the prosecution of applications for patents in general, except for the fee due for a filing, which shall be subject to the payment of a specific fee and annual fees, if any, applicable to the period following the first 15 (fifteen) years.

 

GENERAL AND FINAL PROVISIONS

16. Once INPI verifies that an application filed abroad was subject to a final refusal the application in the Country shall be withdrawn.

17. Appeals my be lodged against a decision issued by INPI rejecting or withdrawing the application for a patent filed and prosecuted according to the provisions of this Normative Ruling within a period of 90 (ninety) days as from the date of the decision.

17.1. If no appeal is lodged within the period of time referred to in the preceding item the application shall be deemed definitively withdrawn and the administrative procedure shall be concluded.

17.2. The decision on the appeal shall conclude the administrative procedure.

18. An application filed according to the provisions of Law No. 5772/71, for which the administrative procedure for grant has already been concluded shall not be the subject matter of a new filing requesting the protection afforded under Article 229, as provided for in Article 230 and 231.

18.1. This prohibition shall be applicable also to the subject matters of applications to which protection has been refused, even if protection has been afforded by the grant of a patent to other subject matters included in the same application.

19. Applications that have been filed in accordance with the provisions of Arts. 230 and 231 in the period of enforcement of Law No. 9.279/96 and the enforcement of this Normative Ruling, independently of any notification shall have a period of 90 (ninety) days to be amended for compliance with this regulation.

 

This Normative Ruling shall be in force as from the date of publication.