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Marilete Tang (São Paulo)
Tel: (55-11) 253-7999
Fax: (55-11) 287-6967
On 14 May 1996 a new Brazilian Industrial Property Law was enacted by President Fernando Henrique Cardoso. Law No. 9,279/96 (the "Law") will come into effect one year after its publication and will replace the current Law No. 5,772/71. Some provisions, however, such as pipeline protection for chemicals, pharmaceutical products and food products have already become effective.
The major changes introduced by the Law are:
* Chemicals, pharmaceuticals and food products will be patentable (under current legislation they are not protected).
* Patents will remain in force for a period of 20 years, in the case of inventions, and 15 years, in the case of utility models, both counted from the date of filing. In any event, in order to protect patent owners against protracted proceedings, the Law provides that the validity of the patent shall not be less than 10 years for inventions, and 7 years for utility models, counted from the date of granting.
* Transgenic microorganisms will be patentable if they comply with the 3 patentability requisites: novelty, inventive activity and industrial application.
* Industrial designs are no longer protected as patents. They will be subject to registration that will be in force for a period of 10 years, counted from the date of filing and renewable for 3 subsequent periods of 5 years each. Novelty, however, is a requirement to secure registration.
* Pipeline protection will be provided, but only if the product has not been marketed anywhere and if no serious and effective preparations for exploitation of the corresponding product have been carried out by third parties in Brazil.
* In order to obtain pipeline protection, the application must be filed in Brazil within 1 year from the enactment of the new Industrial Property law.
* A patent granted under pipeline protection shall be valid for the remaining term of validity in its home country, but counting as from the filing date in Brazil.
* With respect to parallel imports, the owner of a patent or trademark will have the right to prevent third parties from importing the subject matter of the patent or assisting others to do so. Such exclusive right will not apply to products which have been introduced in the Brazilian market directly by the patent (or trademark) owner or with its consent.
* Any visually perceptible distinctive sign may be registered as a trademark; therefore registration of three-dimensional trademarks will be allowed. The registration of a trademark will be valid for a period of 10 years and may be renewed indefinitely.
* Protection of trade dress will be available, not only under trademark registration but also as industrial design registration.
* Under previous Brazilian legislation, a patent or trademark license could generate royalties only if certain very strict conditions were fulfilled, i.e., their application in Brazil had to be made within the Paris Union Convention priority period (6 months as from application in the country of origin for trademarks and industrial models / designs, and 1 year for patents of invention). In addition, in order to generate royalties, the licensed trademarks had to be in their first 10 year period of validity. In practice, such conditions were very seldom fulfilled and the great majority of the agreements had to be royalty-free. Under the Law such conditions will no longer exist and the parties will be free to contract the royalties to be paid under license agreements.
* The violation of industrial property rights (patents, industrial designs and trademarks) is defined as a crime under the Law, as they have been in earlier statutes. Likewise, the violation of trade secrets and any fraudulent attempt to divert third parties clients are treated as crime of "unfair competition" under the Law. The concept of unfair competition is much enlarged in the Law. Such practices may now be the subject of civil actions.
* False geographical indications are treated under a separate section in the Law, which provides that the Trademark Office will establish the requirements to secure a registration of a geographical indication.
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