Filing Patents & Trademarks in Brazil

Brazil was always well provided with patent laws of complex technical and legal consequence. Fourth country in the world to enact a patent law (in 1809), it was a founding member of the Paris Convention in 1882 and remained a full-fledged party to such treaty since then. Patents received Constitutional acceptance in the first Imperial Charter of 1824, and further Republican Constitutions provided for patent protection (and eventually, trademarks) in their Bill of Rights.
Multilateral considerations were of course present during all the lenghty Congressional proceedings leading to the new law, to be fully in force on May, 1997. Harmonization procedures held by the World Intellectual Property Organization in Geneva and, especially, the negotiation of the Uruguay Round of GATT had brought to the field of intellectual property the concept of international minimum standards, substantive requirements on the content of national laws.
The 1994 successful end of the Uruguay Round and the new (TRIPs) Agreement under World Trade Organization established the minimum standards requirement as the applicable legal criterion. Law 9.279 is obviously intended to fulfill TRIPs required levels.
Who may apply for patents
First to file rule is applicable, what means that the person who gets the patent is not the first inventor but the inventor (or assignee thereof) who firsts apply for it.
In a very important provision, article 42 of Law 9.279 introduces the legal concept of prior possession of an invention. Under this concept, the legal user of an invention eventually patented by a third party may continue working irrespective of the (quasi) exclusive rights of the patent owner, but cannot license or transfer its possession except in the whole of its assets. By this method  , it is dealt with the fairness issue related to the first to invent standard of U.S. law without the complexities of interference procedure. For those cases when the first to file party is not an inventor on its own right, the Code provides for a specific interference court proceeding to annul or seize the patent (art.49).
Inventions made by employees (or public servants, trainees, non employed individuals and independent contractors) during research or similar contracts (or applied for one year thereafter) are owned exclusively by employer, and no payments are due to actual inventor except if employment agreement provided otherwise. In case any participation or royalties are agreed upon, the corresponding amount would not be deemed as wages under Labor Law.
In cases where the inventing employee did not use time, resources or means provided by employer and is not subjected to any research or similar contract terms, patent will inure to inventor, not employer. Inventions made outside specific contracts and with resources provided by employer are equally shared by employer and employee, but employer has exclusive working rights. Rights return to employee if working does not start in one year from issuance of letters patent.
Brazil was always well provided with patent laws of complex technical and legal consequence. Fourth country in the world to enact a patent law (in 1809), it was a founding member of the Paris Convention in 1882 and remained a full-fledged party to such treaty since then. Patents received Constitutional acceptance in the first Imperial Charter of 1824, and further Republican Constitutions provided for patent protection (and eventually, trademarks) in their Bill of Rights.
Multilateral considerations were of course present during all the lenghty Congressional proceedings leading to the new law, to be fully in force on May, 1997. Harmonization procedures held by the World Intellectual Property Organization in Geneva and, especially, the negotiation of the Uruguay Round of GATT had brought to the field of intellectual property the concept of international minimum standards, substantive requirements on the content of national laws.
The 1994 successful end of the Uruguay Round and the new (TRIPs) Agreement under World Trade Organization established the minimum standards requirement as the applicable legal criterion. Law 9.279 is obviously intended to fulfill TRIPs required levels.
Who may apply for patents
First to file rule is applicable, what means that the person who gets the patent is not the first inventor but the inventor (or assignee thereof) who firsts apply for it.
In a very important provision, article 42 of Law 9.279 introduces the legal concept of prior possession of an invention. Under this concept, the legal user of an invention eventually patented by a third party may continue working irrespective of the (quasi) exclusive rights of the patent owner, but cannot license or transfer its possession except in the whole of its assets. By this method  , it is dealt with the fairness issue related to the first to invent standard of U.S. law without the complexities of interference procedure. For those cases when the first to file party is not an inventor on its own right, the Code provides for a specific interference court proceeding to annul or seize the patent (art.49).
Inventions made by employees (or public servants, trainees, non employed individuals and independent contractors) during research or similar contracts (or applied for one year thereafter) are owned exclusively by employer, and no payments are due to actual inventor except if employment agreement provided otherwise. In case any participation or royalties are agreed upon, the corresponding amount would not be deemed as wages under Labor Law.
In cases where the inventing employee did not use time, resources or means provided by employer and is not subjected to any research or similar contract terms, patent will inure to inventor, not employer. Inventions made outside specific contracts and with resources provided by employer are equally shared by employer and employee, but employer has exclusive working rights. Rights return to employee if working does not start in one year from issuance of letters patent.

In seeking registration of a trademark in Brazil it is important that potential registrants should be aware that there is no need to show "intent-to-use" the trademark. Rights only accrue on registration and up until that time the applicant only has an expectation of securing those rights. Furthermore, Brazil adopts the first-to-file principle, although Article 129(1) provides an exception for a party who has been using the same or similar mark in good faith for at least 6 months before the filing of an application.

Any private natural or legal person can file an application to register a trademark, (Article 128), although a foreign entity must retain a properly qualified attorney domiciled in Brazil with powers of representation (Article 217). The law also states, that the applicant must affirm in the application form, under penalty of law, that it effectively and legally exercises the goods or services identified by the trademark.

Trademarks are defined as "visually perceptive distinctive signs" (Article 122) encompassing words, logos, three-dimensional and composite marks. Product, service, certification and collective marks are registrable, however there are no express provisions regarding smell or sound marks.

Goods and services in Brazil are classified according to the current Nice Classification of Goods and Services which Brazil adopted on January 1, 2000. Multi-class applications are not permitted. Interestingly, trademarks on the register before 2000 are still classified according to the previous Brazilian Classification system.

Article 124 is explicit regarding what cannot be registered as a trademark and this includes copyrighted works, commercial names, generic or descriptive marks, advertising slogans, colors, reproductions or imitations of a mark registered by a third party covering a product or service that is identical or similar likely to cause confusion or association.

Once an application is filed and a formal preliminary examination is completed, a trademark is published in the Official Bulletin (up to 2 months when filed online or longer if filed on paper forms). This publication allows interested third parties a 60 day period to oppose the application. If an opposition is filed, this fact is published in the Official Bulletin, permitting the applicant 60 days to submit an answer.

Upon rejection, whether or not an opposition has been filed, a publication follows allowing the applicant a 60 day term to lodge an appeal. If no appeal is filed the PTO simply maintains its decision and the application is declared abandoned, ending further PTO action.

Alternatively, when an application is allowed, a publication occurs in the Official Bulletin so that the applicant is aware it has 60 days to pay the final issuance fees. If these are not timely paid, the application is declared abandoned. Upon payment of these fees, the decision granting registration is published. Within 180 days from this date, interested third parties can institute administrative nullity proceedings seeking the cancellation of the registration.

Article 126 of the Trademark Law expressly recognizes well-known trademarks which enjoy special protection whether or not they have been previously filed or registered in Brazil. However, if a foreign company is opposing a trademark, or instituting administrative nullity proceedings, based on Article 126 and does not possess an application or current registration of its mark in Brazil, it must file an application in the class of interest; otherwise these proceedings will not be taken into consideration (Article 158(2).

Resolution 121/2005 issued guidelines as to how owners of marks can claim the status of "highly renowned" or protection in all classes of the classification system for a term of 5 years. Strangely, claimants can only do so incidental to opposition proceedings or administrative nullity proceedings submitting evidence before a special commission.

Finally, a trademark remains in force for a 10 year term and can be renewed for equal and successive periods. There is no need to present proof of use in order to maintain a registration. However, if use of the mark in Brazil has not been initiated, or has been interrupted for more than 5 consecutive years, a trademark can be cancelled. The petitioning party must show a legitimate interest and once published in the Official Bulletin the registrant has the onus of proving, within a term of 60 days, that the trademark is being used or submit grounds justifying non-use.