Frequently Asked Questions
Trademark Registration
A trademark is any distinctive, visually perceptible sign that identifies and distinguishes products and services.
The registered trademark guarantees its owner the right of exclusive use in the national territory in his branch of economic activity.
The registration is valid for ten years. The owner must keep the trademark in use and extend the registration every ten years.
The natural person may apply for trademark registration, provided that it proves the activity exercised.
The registration of the trademark is extinguished by the expiration of the term; by the renunciation (voluntary abandonment of the owner); by forfeiture (lack of use of the trademark) or by non-compliance with the legislation
Yes, it is possible to transfer ownership of the record.
Yes, the renewal request must be made during the last year of the registration, upon payment of a new fee.
Any person who, in good faith, has been using in the country for at least six months an identical or similar trademark for the same or similar activity can claim the right of precedence to registration.
Patent Registration
A patent is a temporary title to an invention or utility model, valid in a given country and for a specific time. The owner of a patent enjoys the exclusivity of use of his invention and possesses all rights over it, being able to prevent third parties from using it, commercializing it, licensing it, etc.
The types of patents are:
– Patent of Invention (IP): inventions that constitute a new technical solution to a given problem. It must have three characteristics: novelty, inventive activity and industrial application.
-Utility Model (MU): constitutes a new form or arrangement, involving an inventive act, which results in a functional improvement in the use or manufacture of an invention.
-New: it must be substantially different from other inventions already patented or which are on the market.
-Invention activity: it cannot be something obvious to a technician of the subject matter and very similar to the current state of the art.
-Industrial Application: it must have applications in the industrial branch and be susceptible of industrial manufacture.
A patent registered in Brazil is only valid in the national territory. It is possible to protect the invention in other countries, but it is necessary to make the deposit in each one of them. The application made in Brazil will need to be translated into the language accepted in that country and it will be necessary to have a resident attorney in that country.
No. Patent protection is only granted for concrete inventions that follow the minimum requirements foreseen by the INPI. Ideas fit into ‘purely abstract conceptions’, which are not protected by patents.
Not necessarily. The industrial secret contract (also known as industrial secret) and the patent are very different types of protection. The patent is an exclusive right guaranteed by law, which allows the exclusive use of the invention by its owner. It is registered with the INPI and has a term of validity, that is, it will be public after some years.
The Industrial Secret is not registrable and is a knowledge acquired internally by a company, which guarantees it a competitive advantage. Its main characteristic is that it has no expiration date, such as a patent, but requires that its confidentiality be maintained. Companies spend a lot of resources to keep industrial secrets and prevent them from being disclosed. The most famous case is Coca Cola’s formula: the company chose not to patent its invention and protect it through an industrial secret. This has allowed the company to have exclusivity on its product until today. If it had chosen to patent, after 20 years the formula would be in the public domain.
It is not necessary to have a prototype, only documents, images and descriptions that characterize your invention are sufficient to apply for patent registration.
The examination of all patent applications is the responsibility of the INPI and varies from case to case.
Strictly speaking, it is not necessary to count on the help of a professional to apply for a patent in Brazil. However, applying for a patent is an extremely technical process and full of details that can go unnoticed by those who have no experience in the subject matter
No. The patent application is a ‘right expectation’, i.e. you do not yet have the rights effectively. These will only be guaranteed when the BPTO judges the application and issues the patent letter. However, if third parties use your invention before you are the owner of the rights, it is recommended to notify them extra judicially of the infringement. If they continue to make use of the object of the patent, it is possible to initiate legal action when the patent is granted, charging retroactive damages, from the date of publication of the application.
It’s very important to keep an eye on competitors to identify any evidence of copying. There is some software that can help you do this monitoring. They are able to check, on a weekly basis, all new patent applications made at INPI and inform you in case someone tries to register some technology similar to yours.
Software and/or App Registration
Computer programs (software) have their protection disciplined in Law No. 9609 of February 19, 1998. The registration is optional, being merely declaratory. Its validity is international. It should be mentioned that this protection is in the expression and not in the solution reached. The wording of the computer program (source code, object or executable) does not cover the technical content.
The object of protection, by copyright, comprises:
– Source code (original form of writing);
– Internal structure (nature, content and relationship / sequence between the various modules);
– Preparatory material (notes, flowcharts, diagrams);
– External appearance (“look and feel” of screens and functions);
– Specification folder (functional requirements know-how); and
– Manuals (texts, graphics).
Since the protection of computer programs is linked to Copyright, it comprises moral rights, which are inalienable, irrevocable and patrimonial. The moral rights that apply to computer programs are the right of the author to claim paternity of the program and the right to object to unauthorized changes when they involve deformation, mutilation or damage to his honor or reputation. The property rights guarantee the owner the exclusive right to use, enjoy and dispose of his work.
Community trademark (EU)
Any natural or legal person, including public bodies, may be the proprietor of a European Union (EU) trade mark.
A national trade mark confers protection only in the Member State in which it is registered, whereas an EU trade mark confers on its proprietor an exclusive right in all current and future EU Member States.
It is entirely up to applicants to decide whether they want to obtain a national, regional, EU-wide or international registration of their trade mark.
The registration of a Community (EU) trademark is valid for 10 years and can be renewed indefinitely.
Applicants may not register the following trademarks: Trademarks which do not meet moral standards and are contrary to public order; Common and vague terms; Names, flags or symbols of nations, states or international organizations; Trademarks which are not distinctive.
Yes, it is the same thing, European Union trade mark or Community trade mark.
Industrial Design Registration
Industrial Design is not considered a purely artistic work, moreover, it is not registrable:
– The common or vulgar necessary form of the object;
– The form determined essentially by technical or functional considerations;
– What is contrary to morals and good customs, that offends the honor or image of people; – That attacks the freedom of conscience, belief, religious worship or idea and feelings worthy of respect and veneration.
It is advisable not to expose an idea or even a product, to anyone, without first trying to protect yourself with regard to intellectual property rights. However, if there is a need for prior disclosure and so that the novelty is not harmed, there is the Grace Period, which allows such disclosure before 180 days for Industrial Design Registration.
However, the Grace Period does not protect the applicant from deposits made by third parties.
The application for registration must refer to a single object, a plurality of variations allowed, as long as they are intended for the same purpose and keep the same distinctive feature among themselves, each application being limited to 20 variations. The drawing must clearly and sufficiently represent the object and its variations, if any, in order to allow its reproduction by a technician in the subject.
The report, initiated by the title, must be limited to the ornamental aspects of the object and, in the case of configurative variants, must clearly define that they are variants of the object requested.
The submission of claims will be mandatory when drawings or photographs are not sufficient to clearly delimit and define the object and its variations. In the case of variations, the claims must be as many as the configurative variations, so that each claim is limited to a single object.
When it is a set, the component objects(20 at most) must be destined to the same purpose.
The application for Industrial Design registration will be automatically published after the filing and simultaneously granted by INPI without examination and the analysis of the novelty and originality aspects, issuing the respective certificate.
The owner of the Industrial Design may request the examination of the object of the registration, at any time during the term, as to the aspects of novelty and originality, in order to further guarantee his rights. The INPI will issue an opinion of merit if it concludes that at least one of the requirements included in the legal definition – being new, original, or not being a purely artistic work – is missing. This will serve as a basis for the opening, ex officio, of a nullity proceeding. The holder will be summoned to manifest himself within the common period of 60 days. After this period has elapsed, the president of the INPI will decide, closing the administrative instance.
The registration granted in disagreement with the provisions of the law is null and void; the nullity will take effect from the filing of the application.
The nullity can be declared administratively, by request of any person with legitimate interest or of office, within a period of five years counted from the granting of the registration (by contradictory).
The registration is extinguished:
– By the expiration of the term;
– By the waiver of its owner, except for the rights of third parties;
– By the lack of payment of the foreseen fee; or
– For the absence of a duly qualified attorney domiciled in the country, with powers to represent her administratively and judicially, including to receive summons in the case of a holder domiciled abroad.
The five-year period is the payment of Industrial Design Registration fees. The 1st five-year period is considered the filing and the 2nd five-year period must be paid at the beginning of the 5th year from the filing date and so every 5 (five) years until the 5th five-year period. Industrial Design Registrations also depend on the payment of an Extension fee, as a maintenance fee for the process, and these must be paid with the 3rd, 4th and 5th five years. Therefore, the payment of the 3rd five-year term will be presented together with the request for extension to which the registration is entitled. The payment of the five-year period may also be made within six months of the established deadline.
The registration will be in force for a period of 10 (ten) years counted from the date of filing, extendable for three successive periods of 5 (five) years each until the maximum period of 25 (twenty-five) years is reached (Art. 108 of LPI).
The request for extension may be formulated up to 180 days after the end of the term of the registration.
– The property of the Industrial Design, acquired by the registration;
– The right to prevent third parties, without your consent, from producing, using, selling, selling or importing for these purposes the product that is the object of the design;
– The right to obtain compensation for improper exploitation of its object.
