Chapter II - Effects of the filing and of the International Publication
Chapter VI - Publication of Receipt of the Application in the National Phase
MINISTRY OF INDUSTRY, COMMERCE AND TOURISM NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY |
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OFFICE OF THE PRESIDENT |
March 5, 1997 |
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REGULATIONS (Normative) ACT |
Nº 128 |
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THE PRESIDENT OF THE INPI, within the scope of his prerogatives, and CONSIDERING the need to adequate the provisions of the Patent Cooperation Treaty (PCT) to the provisions of the new Industrial Property Law – Law No. 9279 dated May 14, 1996 (hereinafter IPL); CONSIDERING the need to render the provisions of the Patent Cooperation Treaty (PCT) adequate to the situations where the INPI is the agency where the international application is filed, or when it is designated or elected by the applicant to process the application of the same, towards the granting of a Brazilian patent; CONSIDERING that the processing of the final phase of an international application having been filed under the PCT, observing the provisions of the Treaty, is compliant with the legislation, the rules and the procedures of each country, in what has been conventionally designated as the "national phase of the PCT"; CONSIDERING the need to interpret the Brazilian legislation devices, procedures and internal rules, aiming at render the same harmonic with the provisions of the PCT execution regulation; CONSIDERING, finally, the need to exercise the options that the PCT awards to the receiving departments, having been designated or elected in the specific field of their competence,
To hereby establish the following rules of proceeding:
FILING OF THE INTERNATIONAL APPLICATION AT THE INPI (sole chapter) 1. The INPI is the receiving Department in Brazil for the international applications for the various types of legal protection accorded to inventions and utility models, from applicants legally able to do so in the form defined in Article 9th of the PCT and Rule 18 of the regulations thereof. 2. The international applications shall be filed exclusively at the INPI, in Rio de Janeiro, which will be in charge of forwarding the same to the International Office and to the Administration in charge of the International search proceedings. 3. The filing of an international application requires the payment of the international fees (basic fee, designation fee and search fee) and the fee due for the processing of the application, included in the specific table of fees. 3.1 The basic fee and the search fee, when not collected upon submission of the application, should be paid within one month from the date of the receipt of the international application. 3.2 The designation fee, when not collected upon submission of the application, should be paid:
3.3 The processing fee shall be collected in the act of submission of the application. 3.4 If the applicant exercises the right provided in Rule 4.9 (b) of the PCT regulation concerning additional designations, the same should, within the delay of 15 months of the date of the priority claimed or the date of receipt of the application when there is no claim of priority:
3.5 When the applicant fails to effect any of the applicable payments within the delays provided in Items 3.1 through 3.3, the INPI shall request that payment be effected within the delay of 30 days subject to forfeiture of the application or forfeiture of the designation of any State in accordance with Article 14.3 of the PCT. 3.5.1 The payment of the fees in accordance with this Item shall subject the applicant to an additional fee in the amount indicated below, observing the maximum limit corresponding to the amount of the basic fee:
3.6 The payments of the fees provided, except the processing fee, that are not effected in the act of filing of the application shall be subject to readjustments that may occur except when the payment is effected within the delay of one month of the date of receipt of the application. 3.7 The fee shall be increased by the amount corresponding to currency exchange burdens, in addition to the collection of the tax burdens that may eventually be required in connection with the remittance of the international fees. 3.8 The amount of the international fees shall be converted to the Brazilian currency (Real) at the exchange rate of the day of payment, and shall be paid in Brazilian Reais. 4 The international application should be filed by means of a specific form (in the – English – language – Rule 12 of the PCT regulation), including the original document and two copies thereof for the international processing, the interested party being allowed to submit an additional copy for private use. 5 The application should be compliant with the PCT prescriptions and its regulations. 5.1 The date of receipt of the application shall be recorded in the filing form. If the application fails to attend the prescriptions of Article 11 of the PCT, the INPI shall notify the applicant in that connection, granting a delay for the same to effect the amendments as needed. 5.1.1 The date of international filing shall be the date of receipt of the regular application, in the form provided in Article 11 of the PCT or, in the case where any amendment is required, the date of receipt of that amendment. 5.1.2 If such requirements are not attended to within the specified delay, the INPI shall notify the applicant to the effect that the application has been rejected. 5.2 Should the INPI ascertain, after the attribution of the international filing date, that the provisions of Article 14.1 of the PCT were not complied with, it shall grant a delay for the necessary amendments to be effected. 5.2.1 If such requirements are not attended to within the specified delay, the INPI shall notify the applicant and the International Office to the effect that the application has been deemed withdrawn. 5.3 Should the INPI ascertain, after the date of filing, that any of the drawings indicated in the application is missing, it shall notify the applicant to submit the same within the designated delay. 5.3.1 If the missing drawings are submitted within the designated delay, the date of filing shall be altered to the date of that submission. 5.3.2 The notification not being answered, the references to the drawings shall not be taken into account. 5.4 In the case where the submission of the document constituting the international application, the amendments or any other document has been made by telex, cable or facsimile addressed to the Patents Directorate of the INPI, the applicant shall have a delay of 14 (fourteen) days in which to submit to the INPI the definitive documents by means of a follow-up letter identifying the preceding transmission, subject to such documents not being taken into account (Rule 92.4 of the PCT regulation). 5.4.1 The submission of the document provided in this Item shall be admitted regarding the effects thereof, if effected within the regular working period of the reception department of the INPI - Rio de Janeiro, subject to the date of receipt thereof being considered to be the first subsequent working day. 5.5 Should the INPI ascertain, within four months of the date of the international filing, that the provisions of Article 11.1 (I) through (III) of the PCT have not been complied with, it will notify the applicant that the application of the same has been deemed withdrawn. 5.6 The applicant may request that the International Office forward to the designated Departments the documentation concerning the application of the same in order to be able to exercise the right to request a review, from those Departments, of the INPI decision to reject or withdraw the international application, in accordance with Article 25 and Rule 51 of the PCT regulation. 5.7 All documents received by the INPI, including those referring to rejected or withdrawn applications, shall be forwarded to the International Office. 6. The filing may be done directly by the interested party, or by an attorney, with due regard to the provisions of Rule 90 of the PCT regulation. 6.1 If the filing requirement is signed by the applicant, or by several applicants, the power of attorney, if applicable, shall be consigned preferably in the requirement form itself in an appropriate place. 6.2 If the filing requirement is signed by an attorney, a separate form power of attorney shall be required, which may be in the form of the model suggested by the international Office, and which may be obtained from the INPI.
BRAZIL AS THE DESIGNATED OR ELECTED STATE
NATURE OF THE PROTECTION
7. The international applications that designate or elect Brazil may request the granting of patents for inventions or utility models. 7.1 Each application may correspond only to one nature of protection.
EFFECTS OF THE FILING AND OF THE INTERNATIONAL PUBLICATION
8. The dates of international filing and of international publication shall prevail for all purposes as being those of effective filing in Brazil and of international publication (Articles 11.3 and 29.1 of the PCT).
DATES, DEADLINES AND DOCUMENTATION IN THE EVENT OF DESIGNATION
9. In the event of designation of Brazil, there should be submitted, in a delay of up to 20 (twenty) months from the date of priority, the text in the vernacular language of the application as per the initial international filing (specification, claims, abstract and drawings, if any) and, there being any, the amendments and the statement provided in Article 19 of the PCT, together with a document identifying the essential data of the international application, naming the inventors, in addition to the evidence of payment of the applicable fee. 9.1 The identification document referred above may be the form attached herein. 9.2 Should the applicant fail to submit in the vernacular language at least one body of claims (Article 19 of the PCT) or the specification, the application shall de deemed withdrawn regarding Brazil and shall be shelved. 9.2.1 Should the applicant fail to submit in the vernacular language any other of the documents listed in Item 9, there shall be formulated a requirement for the applicant to submit the same within the delay of 60 (sixty) days from the requirement, subject, in the case of a statement, to the same being disregarded, and in the remaining cases, to the application being deemed withdrawn in Brazil and shelved, in which case the applicant may apply, within 60 (sixty) days, for reversal of the shelving decision, upon submission of the document in question. 9.3 In the case where the communication provided in Article 20 of the PCT has not occurred, the applicant should submit such documentation within the delay of 60 (sixty) days of the information from the INPI of the absence of that communication, the beginning of the processing of the national phase remaining pending, the documentation not having been submitted in the delay provided and the communication not having been received in accordance with Article 20 of the PCT within that period, the application shall be deemed rejected relatively to Brazil, and shall be shelved, in which case the applicant may request within 60 (sixty) days the unshelving thereof by submitting the documentation in question. 10. The right to amend provided in Article 28 of the PCT and in Rule 52 of the regulation thereof may be practiced:
DATES, DEADLINES AND DOCUMENTATION IN THE EVENT OF ELECTION 11. Brazil having been elected, there should, before expiry of the 19th (nineteenth) month of the date of priority (Article 39.1 (a) of the PCT), be submitted within the delay of 30 (thirty) months of the priority date, the documentation as referred in Item 9 of this decision, and:
12. Regarding the documentation required for entering the national phase, there shall be applied the provisions for the submission thereof in the terms of Items 9.1, 9.2, 9.3 and 9.4. 13. The right to amend provided in Article 41 of the PCT may be practiced:
14. Any event of election made after the 19th month counted from the date of priority shall not produce, concerning Brazil, any effects relative to the the delays provided in Chapter II of the PCT regarding the national processing. 15. If the international preliminary examination report or the election of Brazil have been withdrawn, or if the international preliminary examination report has been deemed not submitted in accordance with the provisions of the PCT and the national phase not having been initiated within the delay of Article 22 of the PCT, the international application shall be deemed withdrawn regarding of Brazil and shall be shelved.
SUBMISSION OF THE APPLICATION AND RENUMBERING OF THE SAME
16. An application filed under the PCT may be forwarded to the Reception department of the INPI in Rio de Janeiro, to the Agencies, or state departments being INPI representatives, together with the payment form of the due fee. 16.1 The identification document, the specification, the claims, the abstract, the eventual drawings, as well as the amendments and substitutions provided in the PCT shall be submitted together with at least two and at most four copies of the same, the submission thereof, when not effected at the time of beginning of the national phase, being allowed within 60 (sixty) days of that date, regardless of notification. 16.2 The payment form should be submitted in accordance with the pertinent rules, relative to national applications, there being noted in the line reserved for the specification of the service the words "National phase of PCT No. ..." 17. Upon the application having been delivered at the Reception of the INPI, it shall proceed in accordance with the rules respective of national applications, but only a brief verification of the documentation shall be performed, with the attribution of a date of mere receipt. 18. The application undergoes formal examination by the competent sector of the INPI, which, upon finding that the application is valid, dockets the delivery thereof by means of mechanical numbering, such as for a national application, there prevailing, nevertheless, as the date of filing, the date of international filing. 19. The number assigned by the INPI, in the form indicated in the preceding Item shall prevail thereafter for all national effects of the application, the international application number ceasing to be effective, except as a reference. 20. The number to be assigned to the application, in the national phase, shall be subordinated to the date of the international application, as follows:
21. The submission of any documentation, further to the forwarding of the application for the national phase, shall correspond to a new petition and fee, in accordance with the pertinent rules.
PUBLICATION OF RECEIPT OF THE APPLICATION IN THE NATIONAL PHASE
22. Once received in the national phase, the application shall be divulged in the vernacular language. 22.1 The publication of the receipt of the application in the national phase shall bear reference to the number received in the national phase, the number and date of the international application, and to the number and date of the international publication. 22.2 The cover of the leaflet of the application in the vernacular language should include, further to the number received in the national phase, the date and number of the international publication, the date of receipt of the application in the national phase, as well as the number and date of the international application.
GENERAL PROVISIONS 23. The request for examination to which Article 33 of the IPL refers may be formulated within 36 months of the international filing date or within 60 (sixty) days of the beginning of the national phase, whichever expires later. 24. Whenever there is claimed the priority of a prior filing and the priority document failed to be submitted to the international Office (Rule 17 (i) (a) and (b) of the PCT regulation), the priority claim shall no longer be considered concerning Brazil. 25. Whenever there is claimed the priority of a prior filing and the priority document was submitted to the International Office, in the form provided in the PCT, there should be submitted a free translation of the filing certificate, the statement or equivalent document, within the delay of 60 (sixty) days from the date of beginning of national processing.CHAPTER VII 25.1 When the data identifying the applications included in the filing certificate or equivalent document are in conformity with those of the request for beginning of the national phase (form model 1.03), there may be effected a statement in the respective filing form, or in separate, within the delay provided in § 4th of Article 16 of the IPL, having the same effect as the free translation provided in § 2nd of Article 16 of the IPL. 26. Until 60 (sixty) days of beginning of the national phase, there should be submitted a power of attorney, whenever the holder of the patent application is a person being domiciled abroad, or when the holder of the patent application, being domiciled in the country, does not apply for the same in person. 27. If the applicant that files the international application is different from the one that filed the prior application which priority is claimed and no evidence has been submitted as to the right thereto, there should be submitted a copy of the corresponding assignment document or a statement of assignment or equivalent document, the notarization/legalization thereof being dispensed, together with a free translation or a bilingual document. 27.1 The procedures to be observed concerning the assignment document shall be those established in the law of the country where it has been executed. 27.2 The right to the filing and to the priority is presumed to have been assigned in the cases of patent applications which filing applicant is an employer or a party having contracted the inventor, provided there is submitted the document evidencing that relationship and the assignment of future inventions, or an equivalent document. 28. Failure to submit evidence supporting the priority claim as provided in Article 16 of the IPL shall entail loss of the priority, except if the party is able to provide evidence that it did not do so for a legitimate reason, there being applied the provisions of Article 221 of the IPL. 29. There having been an assignment of the rights relative the filing of the international application and the document evidencing the fact and the text thereof in the vernacular language have not been submitted by the applicant together with the remaining documents relative to the beginning of the national phase, and the assignment is mentioned in the documentation pertaining to the international phase, the INPI, upon the request for examination, shall formulate a requirement for the submission thereof in the terms of the national legislation. 29.1 If the documentation of the international phase bears no reference to the assignment, the filing applicant shall have a delay of 60 (sixty) days after the expiry of the delays of Articles 22 and 39 of the PCT, regardless of any request, to submit the same or to plead a legitimate reason, in the form of Article 221 of the IPL, the beginning of processing of the national phase remaining pending thereby. 29.1.1 If the documentation is not submitted within the delay provided and no specific communication is received from the International Office during that period, the application shall be deemed to have been withdrawn as regards Brazil and shall be shelved, in which case the applicant may request, within 60 (sixty) days, the reversal of the shelving decision by means of submission of the document in question. 30. Should the filing applicant wish to request the INPI to review the decisions of the receiving Department or of the International Bureau, in accordance with Article 25 of the PCT, the same should submit both the international application and its complementary documentation in the vernacular language, together with evidence of payment of the respective fee, within two months of the notification of the decision in question (Rule 51 of the PCT regulation). 30.1 If the INPI rules that the decision of the receiving Department or the International Bureau was not justified, it shall notify the International Office to proceed with the processing of the international application, for the same to produce its effects as concerning Brazil. 31. The annuities of the patent application shall be due from the beginning of the third year of the international filing, and payment of the annual fees having become due before the date of beginning of the national processing should be effected within the delay of 3 (three) months of that date. 32. If it finds it indispensable, the INPI may request, subsequently, a free translation of the corresponding documents of the international phase, executed in a foreign language, there being applied, where applicable, the provisions of Article 46 of the PCT. 33. The international search report, as well as the international preliminary examination, constitute mere auxiliaries regarding the decision of the respective patent application. 34. The Brazilian rules and the PCT shall prevail in whatever is not provided in this resolution in its scope of competence. 35. The amounts of the fees regarding the cost of the services provided shall be those included in the Table of Service Fees of the INPI. 35.1 The changes in the international fees and modifications in the PCT regulation shall be publicized in the RPI (Industrial Property Official Gazette). 36. This Normative Act becomes effective on May 15, 1997, Resolution 037 of 11/12/92 and any other provisions to the contrary being hereby revoked.
(signed)
AMÉRICO PUPPIN President
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