BRPTO published Ordinance to facilitate control over the payment of annual fees for patents and patents applications

December 19, 2023

The BRPTO published this Tuesday, December 19, 2023, BRPTO/PR's Ordinance #52[1] regulating procedures related to the payment of annual fees, patent applications shelving, and patents termination, in addition to the restoration of patent applications and patents. All changes were based on articles 84 to 87 of Law #9,279/96 (Brazilian Patent Statute) and many of them formalize practices already carried out by the agency.

The main change concerning annual fees is the possibility of advancing payment up to three months from the beginning of the annual fee's anniversary date — that is, the beginning of the ordinary payment period for the annuity in question. Utilizing the payment of a current annuity to pay off a previous one's debt is another significant modification.

The BRPTO established in the Ordinance the practice that, in order to restore patents and patent applications, the restoration request must be accompanied by the payment of any outstanding annual fees or supplements that are due, within the three-month period provided for in article 87 of the Brazilian Patent Statute. The applicant or patent owner may also anticipate the request for restoration of the patent application or patent even before its shelving or termination is published, based on article 220 of the Brazilian Patent Statute.

In the case of patent applications or patents under joint ownership, article 21 of BRPTO/PR's Ordinance #52 establishes that all applicants must meet the criteria established in the Schedule of Fees for Patent-Related Services to qualify for the discounts offered.

BRPTO/PR's Ordinance #52 revokes BRPTO/PR's Rule #113/2013 and articles 1, item II, and 5 of BRPTO's Ordinance #302/2020.

For more information, send an email to patents@lickslegal.com.

1 Published in BRPTO's Official Gazette #2763, of December 19, 2023. Available at: http://revistas.inpi.gov.br/pdf/Comunicados2763.pdf. Accessed on: 19 Dec. 2023.