September 16, 2020
The BRPTO has launched a pilot project, referred to as an IP Showcase (Vitrine de PI), to facilitate the publication of information regarding industrial property assets available for commercial exploitation. The project was established by BRPTO Ordinance #331/2020 and published in its Official Gazette #2593 on September 15th, 2020.
Under the new program, the BRPTO will advertise information regarding industrial property assets resulting from patent cases. To be publicized by the BRPTO, the cases must have met the following requirements: i) have already received the BRPTO notification “Submission of a brief for entry into the national phase,” in the case of international applications, or have received the BRPTO notification “Patent application or certificate of addition of invention filed,” in the case of national applications; ii) have been filed for at least 18 (eighteen) months or have a request for anticipated publication filed with the BRPTO or, in case of international applications, have been published by the WIPO; and iii) not have an exclusive licensing agreement related to it.
The publication of the advertisements of industrial property assets in the IP showcase will be undertaken by the BRPTO upon the submission of an official request by one or more of the patent applicants or patentees, or by an attorney duly qualified to make the request. The request can only be filed electronically and must contain a proof of payment of the IP Showcase request fee and a declaration stating that there is no exclusive licensing agreement settled for it.
If the request does not meet the requirements established by Ordinance #331/2020, the BRPTO will issue an office action, which must be replied to within 60-days of its notification date. No appeal will be available in cases where the BRPTO denies the advertisement publication request.
In cases where industrial property assets published in the IP Showcase are accepted for a pending patent application, the advertisement will not be extended to the corresponding patent. The patentee must submit a new request for publication of that patent. The patentee can also offer it for the purpose of exploitation, under the provisions of article 64 of the Brazilian patent statute.
The publication will be valid for 1 (one) year, from the date of publication of the granting of the request in the BRPTO’s Official Gazette.
The advertiser must i) keep the information regarding the business situation of its asset(s) released through the digital platform up to date; and ii) inform the BRPTO of the eventual execution of any license agreement for exploration according to article 61 of the Brazilian patent statute, regardless of its registration, according to the provisions of article 62 of the same statute.
This ordinance will come into force as of October 1st, 2020. The original Portuguese version of Ordinance #331/2020 is available here. Please contact us for the English version. For more information regarding this matter, e-mail us at patents@lickslegal.com.
