THE PRESIDENT OF THE INPI, within the scope of his prerogatives, and

CONSIDERING the need that general rules of proceeding be established to explain and comply with the provisions of the Industrial Property Law – Law No. 9279 dated May 14, 1996 (hereinafter IPL), regarding the registrations for industrial designs,

DECIDES:

To hereby establish the following rules of proceeding:

1. OWNERSHIP

1.1 The request for non-disclosure of the inventor’s name, in accordance with § 4th of Article 6th of the IPL, shall be indicated in the filing request, and there should be submitted, in the form of attachments, in a closed envelope, a document from the applicant naming and qualifying the inventor and the author’s statement requesting that his name not be disclosed.

1.1.1 Upon verification by the INPI, the documents and the statement referred hereinabove shall be kept in a sealed envelope.

1.2 Upon a request of non-disclosure of the inventor’s name, the INPI shall omit such information in the publications regarding the process in question, as well as in copies of the process supplied to third parties.

1.3 In the case of item 1.1, third parties with legitimate interest may request to the INPI that the inventor(s)’ name(s) be informed, under the promise, subject to the penalties provided in the law, that they shall effect no disclosure thereof, beyond the need to establish and question an eventual illegitimate condition.

2. GRACE  PERIOD

2.1 The disclosure of an industrial design shall not be deemed to be part of the state of the art when it occurs during the 180 (one hundred and eighty) days prior to the date of filing or of priority of the application for registration of an industrial design, provided it was effected according to Inserts I, II and III of Article 12 of the IPL (period of grace).

2.2 The author should, for the purposes of Article 12 of the IPL, at the time of the application, indicate the form, place and date of the event of disclosure, having done the same himself.

2.3 The INPI, during the examination, may, whenever it deems necessary, formulate a duly substantiated official requirement for the submission, within 60 (sixty) days, of evidence relative to such disclosure, substantiated by the requisite of certainty, as to its existence and date, as well as the relationship of such disclosure, in the form provided in Article 12 of the IPL.

3. PRIORITY

3.1 The claim of priority shall be evidenced by a proper document from the origin, containing drawings and, if applicable, a specification and claims, accompanied by a free translation of the filing certificate or equivalent document.

3.2 When the data identifying the applications included in the filing certificate or equivalent document duly reflects such data as included in the filing request of the application (form Model 1.06), a statement may be made, in the respective filing form, or in separate, until the date of submission of the proper document, having the same effect as the free translation provided in § 2nd of Article 16 of the IPL.

3.3 If the priority claim made upon filing is supported by other additional priorities, in accordance with § 1st of Article 16 of the IPL, the initial delay of 90 (ninety) days from the filing of the application (Article 99 of the IPL) for submission of the respective evidence, shall not be altered.

3.4 If the document having originated the priority is from a different applicant than the one that filed the application in Brazil, through the assignment of rights, a copy shall be submitted of the corresponding assignment document, executed on a date prior to that of filing in Brazil, or a statement of assignment or equivalent document, notarisation / legalisation thereof being excused, together with a free translation or a bilingual document.

3.4.1 The formalities of the document of assignment of the priority right shall be those established in the law of the country where it has been executed.

3.4.2 The right due to filing and the right of priority shall be deemed as having been assigned in the case of applications for registration of industrial designs which applicant is the employer or the client of the inventor in light of a contract, provided that submission be made of the document evidencing such relationship and the assignment of future inventions, or an equivalent document.

3.5 Failure to submit evidence of the claim for priority as provided in Article 16 of the IPL shall entail the loss of priority, except if the party proves that such failure was due to a legitimate reason, the provisions of Article 221 of the IPL being applied therefore.

4. SUBMISSION OF THE APPLICATION FOR REGISTRATION OF AN INDUSTRIAL DESIGN

4.1 The application for registration of an industrial design, which shall always be in the Portuguese language, shall include:

(I) Filing form, by means of form Model 1.06;

(II) Specification, if applicable, in accordance with the provisions of the present Act.

(III) Claims, in accordance with the provisions of the present Act.

(IV) Drawings or photographs, in accordance with the provisions of the present Act.

(V) Field of application of the object,

(VI) Evidence of payment of the filing fee.

4.2 The application for registration of an industrial design may be delivered at the reception department of the INPI, or by postal delivery, with receipt of delivery addressed to the Patents Directorate – Diretoria de Patentes – DIRPA /SAAPAT (Praça Mauá, 7), indicating the code DVP

4.2.1 The applications filed by mail shall be deemed received on the date of posting or on the first working day immediately after, in case the posting is done on a Saturday, a Sunday or a holiday and upon the closing hour of the activities of the reception department at the head office of the INPI, in Rio de Janeiro.

4.3 An application that does not formally comply with the provisions of Items (I) through (V) above, but that contains data concerning the applicant, the industrial design and the author, along with drawings and photographs allowing the perfect identification of the object, may be submitted, against a dated receipt, to the INPI, which shall establish the requirements to be met, within the delay of 5 (five) days of acknowledgement thereof, as provided in Article 226 of the IPL.

4.3.1 Upon having complied with all requirements as to the formal questions, the filing shall be deemed as having been effected on the date of the receipt.

4.3.2 The date to be considered as the filing date, if it is established that the object described does not correspond to the original text, shall be the date when the requirement is met.

4.3.3 In case of failure to comply with the requirement, the application shall be returned to the applicant or shall be placed at the disposal of the same in a specific file at the INPI until conditions may be met for later return thereof.

4.3.4 If the filing is effected by postal delivery, and if additional copies have been delivered, in order to return the same to the applicant, the applicant shall also deliver an additional envelope, addressed and stamped, for returning the additional copies by mail, the INPI not being responsible for loss thereof. In the absence of such addressed and stamped envelope, such additional copies shall be placed at the disposal of the applicant, at the INPI, in Rio de Janeiro.

5. FILING

5.1 The filing shall be considered as being the act whereby the INPI, having proceeded to effect the formal preliminary examination, dockets the application for registration of the industrial design by means of a specific numbering.

6. FIVE-YEAR TERMS

6.1 The payment of the second five-year term should be effected during the fifth year from the date of filing, and the same may also be effected within the six months following this delay, independent of any notice, by means of payment of an additional fee (Article 108, Paragraph 2nd of the IPL).

6.2 The payment of the subsequent five-year terms should be effected for the same delay of the respective renewal.

6.2.1 The payment of those five-year terms may be made within 6 (six) months following the delay established above, by means of payment of an additional fee.

6.3 Evidence of payment.

6.3.1 The payment relative to the second five-year term may be evidenced by means of the form Model 1.07.

6.3.2 The evidence of payment of the remaining five-year terms, when not effected together with the request for renewal, may be made using the form Model 1.07.

6.3.2 The payment of the five-year term should be evidenced during the course of the delay established for payment thereof.

6.3.2.1 The payment of the five-year term may be evidenced by means of submission of a copy of the payment receipt, a copy of the bank remittance document or a similar document, enabling the precise identification of the payment having been made, including the respective five-year term, if applicable.

6.3.3 The document evidencing the payment may be submitted at the reception department of the INPI or may be posted in the mail, with a receipt notice.

6.3.4 The submission of evidence is not subject to a fee.

6.4 Penalty for failure to evidence the payment of the five-year term.

6.4.1 The payment not being evidenced, the INPI shall formulate a requirement for the submission of the document evidencing the payment, which shall be attended within the delay of 60 (sixty) days.

6.4.2 The requirement not being met, the INPI shall assume that the payment was not effected, and shall proceed to enforce the applicable provisions.

7. ADDITIONAL PROVISIONS

7.1 Power of Attorney

7.1.1 The instrument of power of attorney, in the form and the terms provided in Article 216 of the IPL, when the interested party does not apply in person, may be submitted within the delay of 60 (sixty) days from the practice of the first action of the party in the process, regardless of any notice or requirement.

7.1.1.1 In the case of a person domiciled abroad, whose acts are not being performed through an attorney in the form of Article 216 of the IPL, there must be submitted a power of attorney, in the terms provided in Article 217 of the IPL, even if the act has been performed in person.

7.1.1.2 The power of attorney provided in Article 217 of the IPL, if not submitted at the time of filing, may be requested by the INPI at any time, including after extinction of the patent, and the same must be submitted within the delay of 60 (sixty) days.

7.1.1.3 If no power of attorney is submitted within the delay of 60 (sixty) days of filing, the application shall be deemed definitively shelved and published.

7.2 The reductions in fees as provided shall only be subject to accumulation up to a maximum percentage of 70% (seventy per cent).

7.3 The shelving provided in § 2nd of Article 216 shall be that of the petition or of the litigation concerning the petition, which shelving may be appealed.

7.4 The free translations mentioned in this Act must include an attestation from the concerned party, applicant or holder, as to the faithfulness thereof.

8. DELAYS

8.1 The request for grant of an additional delay for the performance of an act not having been performed due to a legitimate reason shall be submitted by means of form Model 1.08 and instructed with the justification thereof and applicable evidence.

8.2 Upon the INPI having accepted to the legitimate reason which prevented the party from performing the act within the legal delay, the INPI shall notify the concerned party on the delay that may be granted thereto, in the form provided in Article 226 of the IPL.

8.3 The delay to be granted for the performance of the act shall be from at least 5 (five) days to, at most, the legal delay for the corresponding acts in the remaining cases.

9. GUARANTEE OF PRIORITY

The guarantee of priority filed in accordance with Law No. 5772/71 shall become automatically extinct if, within the delay of 6 (six) months, counted from the date of filing thereof, the application for registration has not been submitted.

10. NUMBERING

10.1 The numbering of the applications for registration of industrial designs and of the corresponding industrial design registrations, shall be comprised of three segments and one check digit, as follows:

10.1.1 Alphabetic qualifier: DI

10.1.2 Numerical qualifier designating the year when the filing was made, comprising two numerals, where the second numeral from left to right indicates the year of the decade, while the first numeral from left to right corresponds to the decade of the year of filing minus 4;

10.1.3 Quantifier of increasing numerical series, annual, comprised of five numerals beginning with 00001.

10.1.4 Check digit.

11. SPECIFIC DETAILS REGARDING THE APPLICATION FOR REGISTRATION OF AN INDUSTRIAL DESIGN

11.1. SPECIFICATION

11.1.1 The submission of the specification shall be mandatory in the cases where the drawings or photographs having been submitted are not sufficient to outline and define clearly the object and its variations.

11.1.2 The specification shall:

a) begin with the title;

b) be limited to the ornamental aspects of the object;

c) in case of configurative variations, define these clearly as being variations of the subject of the application, indicating their main characteristic;

d) establish cross-references to the drawings in a clear, brief and precise manner, mentioning, when applicable, the indicative numerals;

e) define, in a conspicuous manner, the field of application.

 

 

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11.2 CLAIM

11.2.1 Submission of the claim shall be mandatory, in the cases where the drawings or photographs having been submitted are not sufficient to outline and define the subject and the variations of the same.

11.2.2 In the case of variations, the claims should be as many as the configurative variations or the variations of concept of the set, such that each configuration corresponds to only one variation;

11.2.3 Each claim should begin with the title or the corresponding object, in the case of a set or similar (such as a teapot and a teacup, in the case of a tea setand a knife and a spoon, in the case of a cutlery set), cross-referencing to the number(s) of the pertinent figure(s) or photograph(s), indicating the corresponding numeric reference(s), if applicable.

11.3 FIELD OF USE

11.3.1 The filling of the field of use in the filing form of the application for registration of an industrial design is mandatory.

11.3.2 The description of the field of use should be clearly defined.

11.3.3 In the case of a set, the objects comprising the same (20 objects, at most), should be intended for the same purpose, that is, belong to the same object maintaining the same main characteristics therebetween, (such as a set of packages for cosmetic products).

11.3.4 In the case of ornamental patterns comprised by sets of lines and colours, applied to various products, the field of use should specify to which products, or lines of products, such patterns apply.

11.3.5 In the case of an ornamental set of lines and colours being applicable to a product, there shall be accepted 20 variations, at most, of sets of lines and colours that maintain the same main distinctive characteristic therebetween.

11.4 DRAWINGS OR PHOTOGRAPHS

11.4.1 The drawings or photographs should:

a) have their sheets numbered consecutively, in Arabic numerals, indicating the page number and the quantity of pages referring to a certain matter, preferably separated by a slanted bar, (such as 1/5 ... 5/5, where 1/5 refers to the first of the five pages of drawings or photographs);

b) include a perspective view in the case of a three-dimensional object, and as may views as necessary for the perfect visualisation of the object (views: front, rear, upper, lower and sides);

c) be made in a clear manner and in scale allowing reduction with definition of the details, allowing the inclusion of several figures in one single sheet, clearly separated from one another and numbered consecutively;

d) have the figures numbered consecutively with an Arabic numeral. There being more than one view of the same object, these should be identified adding a decimal number to the numeral of the referred object, according to the number of views.

e) have the same numeric reference of the specification, when applicable;

f) in the case of black-and-white drawings or photographs, include an indication corresponding to the areas in colour;

g) in the case of colour photographs or drawings, submit the necessary copies in colour.

11.1.4.2 In the case of photographs, the same should maintain clarity during the term of effectiveness of the registration. New copies should be submitted at the time of renewal of the registration;

11.4.3 The illustrations relating to internal details that do not exhibit merely ornamental characteristics shall not be considered for purposes of protection of Industrial Designs

11.4.4 The numbers and letters in the drawings or photographs should be at least 0.32 cm in height.

11.4.5 The drawings or photographs may not be framed or delimited by lines, and should be located in the paper with the following minimum margins:

upper 2,5 cm – preferably 4 cm

left        2,5 cm – preferably 3 cm

right  1,5 cm

lower 1 cm

11.5 ADDITIONAL SPECIFICATIONS

11.5.1 Title:

11.5.1.1 The title should:

a) be identical for the specification and the claims;

b) be brief, clear and precise, without irrelevant or unnecessary expressions or words (such as "new", "better", "unique" and similar others).

11.5.2 Other general specifications:

11.5.2.1 The specification and the claims should be typewritten or printed with double spacing using indelible black ink, without amendments, erasures or interlineation, stamps, logos, lettering, signs or indications of any nature.

11.5.2.2 The drawings or photographs may not include texts, logos, stamps or initials, with the exception of "fig. 1", "fig. 2", etc.

11.5.2.2 All the basic documents of the application, that is: the specification, the claims and the drawings should be submitted in a manner allowing reproduction thereof.

11.5.2.3 The specification, the claims and the drawings or photographs should be submitted in 3 (three) copies, for the use of the INPI, without signatures or initials, in flexible, resistant, white, smooth paper, not glossy, with the dimensions of 297 mm x 210 mm (model DIN A-4), using only one face thereof, not creased, torn or folded, allowing the submission of an additional two copies, at most, to be returned to the applicant.

11.5.2.4 The sheets containing the specification, as well as the claims, should:

b) be numbered consecutively, using Arabic numerals, in the centre of the upper part, between 1 and 2 cm from the border of the sheet, indicating the number of the page and the total number of pages referring to the specification and to the claims, preferably separated by a slanted bar (such as 1/5 ... 5/5, where 1/5 refers to the first of five pages of the specification);

c) have at the left margin, next to the text, the lines being numbered, from the 5th (fifth), every five lines (5, 10, 15, etc...).

11.6 Any requests for photocopies should be made using form Model 1.05.

12 PUBLICATION

12.1 The applications for Industrial Design Registrations shall be published upon the final decision thereon, whether it is the granting, the rejection or the definitive shelving.

12.2 The applications containing drawings or photographs in colour shall be published in colour, the applicant being due to pay the corresponding fee.

13 RENEWAL

13.1   The request for renewal should be formulated during the last year of effectiveness of the registration, the evidence of payment of the respective fee being included therewith, and it may also be effected within the 180 (one hundred and eighty) days subsequent to that delay, irrespective of notification and by means of the payment of a specific additional fee.

14. FINAL AND TRANSITORY PROVISIONS

14.1 For the purposes of calculation of the payment of the five-year terms for the registrations originating from applications in course of processing of Industrial Models and Designs filed during the term of effectiveness of Law No. 5,772/71, all the payments effected in connection with services not yet performed, as well as the annuities already collected, shall be allowed to be included.

14.1.1 The applicant should effect the payment indicating the amounts of each fee already paid and the credit to which he is entitled.

14.1.2 The five-year terms having become due should be paid within 60 (sixty) days of the granting of the registration, subject to extinction thereof.

14.2 The applications for industrial model and industrial design patents filed during the term of effectiveness of Law No. 5772/71, that are still pending, shall be automatically designated as applications for industrial design registrations and shall be renumbered in the form of Item 14.4.

14.2.1 The applications in the preceding situation that have not been published during the term of effectiveness of Law No. 5772/71 shall be deemed, for all legal purposes, as having been published in 05/15/97.

14.2.1.1 The applications in the above situation shall remain at the disposal of any interested party for copies or review in the Patents Directorate until the notification regarding the publication of the same in the RPI (Industrial Property Official Gazette) is effected.

14.2.1.2 The INPI shall serve notice of the publication of the applications in the situation of the above Item, whereafter the same shall remain at the disposal of the interested parties, at the CEDIN.

14.3 The Industrial Design Registrations shall be attributed the National Classification for Industrial Models and Designs, instituted by Normative Act 104, of 12/21/89.

14.4 RENUMBERING

The applications for industrial model and industrial design patents filed during the term of effectiveness of Law No. 5772/71 and still pending shall be renumbered as follows:

14.4.1 Industrial Models –

Alphabetic qualifier – shall be altered from MI to DI

Numeric qualifier – Not altered

Quantifier Not altered

Check digit Not altered

14.4.2 Industrial Designs

Alphabetic qualifier – Not altered

Numeric qualifier – shall be altered adding 2 to the first numeral from left to right, corresponding to the decade of the filing

Quantifier shall be altered and replaced by the number immediately following the last number given to the industrial models in the year corresponding to the filing.

Check digit Not altered

15. This Normative Act shall begin its term of effectiveness on 05/15/97, Normative Acts 013/75, 077/85 and 078/85, and any other eventual provisions to the contrary being hereby revoked.

(signed)

AMÉRICO PUPPIN

President