BRAZIL Law and Practice Contributed by: Fabiano de Bem da Rocha, Gustavo Bahuschewskyj Correa, Kamille Trindade Machado and Milton Lucídio Leão Barcellos, Leão Intellectual Property
Article 195, XI and XII (in parallel with civil claims). To preserve confidentiality in court proceedings, parties commonly seek protective measures such as sealed filings and/or proceedings under judicial secrecy when the record contains protected confidential information (eg, under Article 189 of the Brazilian Civil Procedure Code). 6. Know-How 6.1 Definition and Legal Basis of Know-How Brazilian law does not define “know-how” as a stan- dalone IP right. In practice, it refers to practical tech- nical or commercial knowledge (eg, manufacturing parameters, process controls, methods, protocols, drawings, specifications, training and operational routines) that enables the production of goods or the delivery of services.. Know-how often overlaps with confidential informa- tion and may qualify as a trade secret when it is not publicly known, has commercial value due to secrecy and is subject to reasonable confidentiality measures. Where secrecy is not (or is no longer) present, protec- tion tends to rely primarily on contract (confidentiality/ non-use) and on civil and unfair competition remedies for bad-faith conduct. For technology transfer purposes, know-how can be the object of an agreement registered with INPI (typi- cally as a “technology supply”/transfer of technology contract). INPI Normative Act No 26/2023 and 27/2023 formalised INPI’s acceptance that non-patented tech- nology (know-how) may be transferred either through permanent acquisition or through a temporary licence of use, which is important for structuring know-how licences with return/termination obligations. 6.2 Protectability Requirements and Scope Common categories of know-how include: • manufacturing and quality-control processes; • technical specifications and drawings; • formulations and production parameters; • implementation details of software and algorithms; • engineering methods; supplier/customer and pric- ing playbooks; and
• training materials and manuals. Know-how does not need to be novel in the patent sense. However, the stronger the secrecy and the clearer the commercial value and access restric- tions, the easier it is to enforce (especially if framed as a trade secret/unfair competition issue). Where the information is public or readily ascertainable, protec- tion is usually limited to contractual commitments (eg, non-use obligations agreed by the recipient). 6.3 Ownership, Creation and Employee Know-How There is no statutory “default title” rule for know-how comparable to patents. In practice, ownership and rights of use are determined by: • the employment/service agreement; • confidentiality and IP assignment clauses; and • general duties of loyalty and confidentiality. Employers commonly require employees to docu- ment and transfer work product and technical learn- ings developed in the course of employment, while employees remain free to use general skills and expe- rience that are not confidential. For contractors and joint development partners, implied rights are risky; parties usually address: • the “background” know-how each party brings; • “foreground” know-how created under the project; • permitted purposes and field/territory; and • obligations to deliver documentation/training and return or destroy materials upon termination. 6.4 Protection Through Contract and Confidentiality Know-how is typically protected through a combina- tion of: • NDAs and robust confidentiality clauses; • non-use and purpose-limitation provisions; • access controls and “need-to-know” rules; • audit, traceability and information-security obliga- tions; and • termination provisions requiring return/destruction of materials and deletion of digital copies.
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