BRAZIL Law and Practice Contributed by: Gabriel F Leonardos, Claudio Barbosa and Viviane de Medeiros Trojan, Kasznar Leonardos Intellectual Property
10.4 Procedure for Licensing an Intellectual Property Right
sation and apostille/legalisation are not required. Witness signatures are only needed if no Brazil- ian location is specified in the document, and the witnesses can be of any nationality. Compulsory Licensing Article 68 of the LPI states that the patent owner may be subject to compulsory licensing if they abuse their patent rights or use the patent to exploit economic power unlawfully, as deter- mined by an administrative or judicial decision in accordance with applicable law. Grounds for a compulsory licensing request include: • Failure to exploit the subject matter of the patent within Brazilian territory or failure to manufacture or complete manufacturing of the product, or failure to fully use a patented process, except in case of economic non-via- bility, in which case imports shall be admitted. • Commercialisation that does not satisfy mar- ket demand. This compulsory licence may be requested only by a party possessing a legitimate interest and having the technical and economic ability to effectively use the subject matter of the patent predominantly for the purposes of the internal market, in which case the exception above, to do with economic non-viability, shall not apply.
After execution by the parties and two wit- nesses, the notarised and legalised or apos- tilled licensed agreement or the electronically executed licence agreement must be submitted to the BRPTO for records. BRPTO conducts a review of the agreement terms (except the pay- ment provision, which BRPTO has no powers to revise) and, upon acceptance, issues a certifi- cate of records containing some basic informa- tion of the agreement, for instance, the names of the parties, nature of the licence (exclusive or not), the Brazilian patent application and/or registration process numbers under licence, the term of the licence, and the royalties estab- lished (if applicable). Subsequently, an extract with basic information about the contract is published in BRPTO’s official gazette but the contract remains confidential and, in general, BRPTO does not furnish copies to third parties. Currently, BRPTO is taking from 60 to 90 days to record a patent licence agreement, provided no official actions are raised during the recording procedure.
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