BRAZIL Law and Practice Contributed by: Gabriel F Leonardos, Claudio Barbosa and Viviane de Medeiros Trojan, Kasznar Leonardos Intellectual Property
(b) the powers of representation of the signatories of the assignment document and their signatures (the representatives’ signatures need to be notarised by the Notary Public and the signature of the Notary Public then needs to be legalised by apostille or by the Brazilian Consulate); and (c) the application number or the number of the patent and the date on which the as- signment document was signed. • The Power of Attorney of the assignee. • A simple translation into Portuguese of docu- ments that were created in a foreign lan- guage. 10.2 Procedure for Assigning an Intellectual Property Right Once the BRPTO has reviewed the relevant documents in accordance with the requirements discussed in 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights , providing that they are all in order, the notice of assignment is published in the official gazette and the certificate of assignment is then issued. 10.3 Requirements or Restrictions to License an Intellectual Property Right Licence Recording In Brazil, a patent owner or applicant may exe- cute an exclusive or non-exclusive licensing contract for exploitation with a third party. Although the recording of patent licence agree- ments before the BRPTO is no longer manda- tory, neither to obtain authorisation for remit - tance abroad of the royalties owed by the local Licensee nor for obtaining the royalty deduct- ibility benefit for corporate income tax purpos- es (see Federal Law 14,286/2021), the licence agreement must be recorded at the BRPTO to be enforceable against third parties.
Thus, the recording of a patent licence agree- ment by the BRPTO is mandatory for the follow- ing purposes: • to obtain presumption of knowledge of the contract by third parties (Article 62, LPI); and • to authorise, when the agreement expressly allows it, the Licensee to sue infringers of the licensed patents at Courts without the IP owner joining as a co-plaintiff. In general, freedom to contract prevails, but the BRPTO may provide some limitations as follows. • The BRPTO only authorises the tax-deducti- bility of royalty payments for a granted patent, not for pending applications. • Usually, a patent licence agreement will be in force in accordance with the periods of valid- ity of the licensed patents (20 years as from the filing date of the patent application). Article 63 of the LPI states that improvements to a licensed patent belong to the party who made them, while granting the other contracting party a preferential right to acquire a licence for the improvement. Additionally, it is important to note that a new Transfer Pricing Law (Law 14,596/23) became effective in January 2024 in Brazil. It represents a landmark reform aligning Brazil’s transfer pricing rules with OECD guidelines. Documentation Requirements A notarised and legalised (via apostille or Bra- zilian Consulate) licence agreement must be submitted to the BRPTO, along with a power of attorney authorising an IP agent to handle its records. The agreement must also meet certain bureaucratic requirements. If the licence agree- ment is electronically signed by all parties, notari-
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