Issues in registering Technology Transfer agreements in Brazil

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One of the most relevant current issues in the Intellectual Property field in Brazil is the bureaucracy involved in the process of registration, before the Brazilian National Industrial Property Institute (Instituto Nacional da Propriedade Industrial – INPI), of Technology Transfer agreements.

The Technology Transfer agreements which are subject to the INPI’s registration procedures are mainly patent, trademark and industrial design assignments and licenses, technical assistance agreements, know-how assignment agreements and franchising agreements – basically, contracts involving assets from which companies can directly benefit.

As most of these agreements involve royalty payments made and received between Brazilian and foreign companies, the Brazilian Central Bank (Banco Central do Brasil) requires a Certificate of Agreement Registration (Certificado de Averbação de Contrato) issued by the INPI in order to effect international royalty remittances, as well as for fiscal purposes, sometimes even working in collaboration with the Brazilian Federal Revenue Office (Receita Federal do Brasil) with this regard.

The main practical issue concerning such registration procedures in Brazil is that the INPI – entity responsible for the process of registration of Technology Transfer agreements in the country – imposes a great deal of bureaucratic demands, which end up delaying the registration process in an almost unsustainable manner, causing direct damages to the companies involved in the contractual relations established by the agreements in subject.

As our IP Team here at SiqueiraCastro is responsible for a relevant number of Technology Transfer agreements registration procedures existing before the INPI, our members have recently been participating in meetings with the Brazilian Industrial Property Association (Associação Brasileira da Propriedade Intelectual – ABPI)’s Technology Transfer and Franchising Commission and they have been in close contact with the INPI in order to discuss the issue and specially cause them to review the reasons why they maintain such a bureaucratic registration system.

The Commission has presented an official paper to the INPI listing all unsustainable issues, and it was very well received by the Institute, despite some minor resistance. In parallel, the general idea is that there is a strong tendency in the Brazilian federal government towards debureaucratization.

This is a continuous work, which our Team intends to fully support and in which we strongly expect to succeed, eventually being able to remedy this issue together with the INPI and allow for a smoother, faster, even more intelligent registration system for the Technology Transfer agreements involving Brazilian and foreign companies.