CHAPTER II - PATENTIABILITY
SETION I - PATENTABLE INVENTIONS AND UTILITY
MODELS
Article 8: To be patentable an invention must meet the requirements
of novelty; inventive activity and industrial application.
Article 9: An objet of practical use, or part thereof, is
patentable as a utility model, if its capability of industrial application features a new
shape or arrangement and involves an inventive act resulting in a functional improvement
in its use or manufacture.
Article 10: The following are not considered to be inventions or
utility models:
- Discoveries, scientific theories and mathematical methods;
- Purely abstract concepts;
- Schemes, plans, principles or methods of a commercial, accounting, financial,
educational, publishing, lottery or fiscal nature;
- Literary, architectural, artistic and scientific works or any aesthetic creation.
- Computer programs per se;
- The presentation of information
- .Rules of games;
- .Operating or surgical techniques and therapeutic or diagnostic methods, for use on the
human or animal body; and
- Natural living beings, in whole or in part, and biological material, including the
genome of germ plasma of any natural living being, when found in nature or isolated
therefrom, and natural biological processes.
Article 11: Inventions and utility models are considered to be
new when not included in the state of the art.
§1 The state of the art comprises everything made accessible to the
public before the date of filing of a patent application, by written or oral description,
by use or any other means, in Brazil or abroad, without the prejudice to the provisions of
Articles 12, 16, and 17.
§2 For the purpose of determining novelty, the whole contents of an
application filed in Brazil, but still unpublished, will be considered as state of the
art, from its filing date, or from the date of the earliest priority claimed, in
case it be eventually published.
§3 The provisions of the preceding paragraph will apply to an
international patent application filed under a treaty or convention effective in Brazil,
if the corresponding application is filed in this country.
Article 12: The disclosure of an invention or utility model
which occurring during the twelve months preceding the patent application filing date or
the earliest priority claimed will not be considered as part of the state of the art,
provided that such disclosure is made by;
- By the inventor;
- By the National Institute of Industrial Property - INPI - (BRAZILIAN PTO), through
official publication of a patent application filed without the consent of the inventor and
based on information obtained from the inventor or as a result of its acts; or
- By third parties, on the basis of information received directly or indirectly from the
inventor or as the result of its acts.
Sole Paragraph: INPI (BRAZILIAN PTO) may require the
inventor to submit a declaration regarding such a disclosure, accompanied or not by
evidence under the conditions established by Law.
Article 13: An invention shall be deemed to involve inventive
activity when, to soneone skilled in the art, it does not appear to commonly or trivially
derive from the state of the art.
Article 14: The utility model shall deemed to involve an
inventive act when, to someone skilled in the art, it does not appear to commonly or
trivially derive from the state of the art.
Article 15: Inventions and utility models are deemed of
industrial application if capable of being produced or used in any kind of industry.
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SECTION II - PRIORITY RIGHTS
Article 16: Priority rights will be guaranteed to a patent
application filed in a country holding an agreement with Brazil or in an international
organization, as if it was a national filing,, within the time limits established in the
agreement. Such filing shall not be invalidated nor jeopardized by facts occurring
within such time limits.
§1 Priority claims must be made at the time of filing, but may be
supplemented within 60 (sixty) days by other priorities earlier than the date of filing in
Brazil.
§2 A priority claim must be supported by a suitable document of
origin, including number, date, title, specifications and, if the case, claims and
drawings, accompanied by an informal translation of the filing certificate or equivalent
document containing data identifying the application, the contents of which will be the
entire responsibility of the applicant.
§3 If not submitted at the time of filing, such proof must be
presented within 180 (one hundred and eighty) days from filing.
§4 For international applications filed under a treaty or convention
effective in Brazil, the translation provided for in §2 must be filed within the period
of 60 (sixty) days from the date of entry into national phase.
§5 When the application filed in Brazil its entirely contained in the
document of origin, an affidavit by the applicant in this respect will substitute the
simple translation.
§6 When priority right is obtained by virtue of an assignment, the
corresponding document must be submitted within 180 (one hundred and eighty) days from
filing or, in the case of entry into national phase, within 60 (sixty) days from the date
of such entry. Consular certification of this document is not required.
§7 Failure to file a priority proof within the time limits established
in this article will result in loss of priority rights.
§8 In the case of an application filed with a priority claim, any
request for early publication must be made with proof of priority on file.
Article 17: An application for a patent of invention or for a
utility model originally filed in Brazil, without a priority claim and still unpublished,
will extend the right of priority to a later application in respect of the same subject
matter filed in Brazil by the same applicant or by his successors, for a time limit of 1
(one) year.
§1 Priority will only be accepted for subject matter disclosed in the
earlier application and will not cover any new matter eventually introduced.
§2 The pending earlier application will be considered as shelved.
§3 A patent application resulting from the division of an earlier
application cannot serve as basis for priority claim.
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SECTION III - NON -PATENTABLE INVENTIONS
AND UTILITY MODELS
Article 18: The following are not patentable:
- Whatever is contrary to morals, good customs and public security, order and health;
- Substances, matter, mixtures, elements or products of any kind, as well as the
modification of their physical-chemical properties and the respective processes of
obtaining or modification thereof, when resulting from the transformation of the atomic
nucleus; and
- Living beings, in whole or in part, except transgenic micro-organisms meeting the three
patentability requirements - novelty, inventive activity and industrial application - as
provided in Article 8 and which are not considered mere discoveries
Sole Paragraph: For the purposes of this law, transgenic
micro-organisms are organisms, except the whole or part of plants or animals, that
present, due to direct human intervention in their genetic composition, a characteristic
that can not normally be attained by species under natural conditions.
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CHAPTER III - PATENT APPLICATIONS
SECTION I - APPLICATION PROCEDURES
Article 19: A patent application should include:
- Executed application form;
- Specification;
- Claims;
- Drawings if any;
- An abstract; and
- Proof of payment of the filing fee.
Article 20: Once submitted, the application will undergo a
formal preliminary examination and, if in due order, will be formally accepted and stamped
(docketed), the date of submittal being considered as the filing date.
Article 21: An application that does not formally meet the
requirements of Article 19, but which does contain data covering subject matter, the
applicant and the inventor, may be delivered to the INPI (BRAZILIAN PTO) against a dated
receipt which will establish the requirements to be met within a period of 30 (thirty)
days, the failure to do so resulting in return or shelving of the documentation.
Sole Paragraph: Once the requirements have been met,
filing of the application will be considered to have been made on the date it was
received.
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SECTION II - CONDITIONS FOR APPLICATION
Article 22: An application for a patent of invention must refer to
a single invention or to a group of inventions so interrelated as to comprise one single
inventive concept.
Article 23: An application for a utility model must refer to a
single basic model, which may include a plurality of distinct additional elements or
structural or configurative variations, provided that technical-functional and corporeal
unity of the object is preserved.
Article 24: The specification must describe the subject matter
clearly and sufficiently so as to enable anyone skilled in the art to carry it out and to
indicate, when applicable, the best mode of execution.
Sole Paragraph: In the case of biological material
essential for the practical execution of the subject matter of the application, which
cannot be described in the form of this Article and which has not been accessible to the
public, the specification will be supplemented by a deposit of the material with an
institution authorized by INPI (BRAZILIAN PTO) or indicated by international agreement.
Article 25: The claims must be based on the specification,
characterizing the particularities of the application, clearly and precisely defining the
subject matter to be protected.
Article 26: A patent application may, prior to completion of its
examination, be split, ex-officio or on applicant's request, into two or more
applications, provided that the divisional application:
- Makes specific reference to the original application; and
- Does not exceed the subject matter disclosed in the original application.
Sole Paragraph: A request for division inconsistent with
the provisions of this article shall be shelved.
Article 27: Divisional application will receive the filing date
of the original application and the benefit of its priority, if any.
Article 28: Each divisional application will be subject to
payment of the applicable fees.
Article 29: A patent application which is withdrawn or abandoned
will be mandatorily published.
§1 A request for withdrawal must be filed within 16 (sixteen) months
counted from the date of filing or of the earliest priority.
§2 Withdrawal of an earlier application, which has no effect,
will confer priority to the first later application.
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SECTION III - PROSECUTION AND EXAMINATION
OF APPLICATION
Article 30: A patent application will be kept secret for 18
(eighteen) months counted from its filing date or from the earliest priority, if any,
after which it will be published, except for the event provided for under Article 75.
§1 Publication of the application can be anticipated upon applicant's
request.
§2 The publication must include data identifying the patent
application, a copy of the specification, claims, abstract and drawings being made
available to the public by the INPI (BRAZILIAN PTO).
§3 In the case provided for in the Sole Paragraph of Article 24, the
biological material will be made available to the public at the time of the publication to
which this article refers.
Article 31: Documents and information to assist examination may
be filed by interested parties between the publication of the application and the
completion of examination.
Sole Paragraph: Examination will not take place prior to
60 (sixty) days from publication of application.
Article 32: In order better to clarify or define a patent
application, applicant may effect amendments up to the date a request for examination is
made, provided such amendments be limited to the subject matter initially disclosed in the
application.
Article 33: Examination of a patent application must be
requested by the applicant or by any interested party, within 36 (thirty six) months
counted from the date of filing, the failure of which will result in shelving of
application.
Sole Paragraph: A patent application may be reinstated,
upon applicant's request, within 60 (sixty) days from its shelving, on payment of a
specific fee, the failure of which will result in final shelving of application.
Article 34: Within 60 (sixty) days of an examination request,
the following must be submitted, the failure of which will result in shelving of
application.
- Objections, prior art searches and the results of examinations corresponding
applications in other countries, when priority is claimed;
- Documents necessary to regularize the proceedings and examination of the application;
and
- An informal translation of the document mentioned in §2 of Article 16, should it have
been substituted by a declaration as provided for in §5 of that same Article.
Article 35: By occasion of technical examination, a search
report and technical report will be issued with regard to:
- Patentiability of the application.
- Adaptation of the application to the nature of protection claimed;
- Reformulation of the application or the division thereof, or
- Technical amendments required.
Article 36: When the Official report is for non-patentiability
or for the inadequacy of the application for the nature of protection claimed or requires
technical amendments, the applicant will be notified to reply within 90 (ninety) days.
§1 If no reply to a official action is filed, the application will be
definitively abandoned.
§2 If a reply to a official action is filed, but such official action
is not fully complied with, or its contents contested, examination will proceed,
regardless of arguments submitted concerning patentability or adequacy.
Article 37: Once examination is concluded, a decision will be
issued to allow or reject the application.
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CHAPTER IV - PATENT GRANT AND TERM
SECTION I - PATENT GRANT
Article 38: A Patent will be granted after the application is
approved and a letters-patent will be issued upon proof of payment of the corresponding
issue fee.
§1 Payment of issue fee and the respective proof thereof must be
effected within 60 (sixty) days from allowance.
§2 The fee provided for hereunder may also be paid and such payment
proved within 30 (thirty) days from expiration of the time limit provided for in the
preceding paragraph, independently of notice by payment of a specific fee, the failure of
which shall result in shelving of the application in final form.
§3 Patent will be considered granted as of the date of publication of
its allowance.
Article 39: The letters-patent will include the respective
number, title and nature of protection, name of the inventor, observing the provisions of
Article 6, §4, the qualification and domicile of the patentee, the term of validity,
specification, claims and drawings, as well as to priority data.
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SECTION II - PATENT VALIDITY TERM
Article 40: A Patent of invention will have a term of 20 (twenty)
years and a utility model patent a term of 15 (fifteen) years, counted from the filing
date.
Sole Paragraph: Such time period will not be less than 10
(ten) years for patents of invention and 7 (seven) years from utility model patents,
counted from grant, except when the INPI (BRAZILIAN PTO) is prevented from proceeding with
the examination as to the merit of the application, due to a proven pending litigation or
for reasons of "force majeure".
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CHAPTER V - PROTECTION AWARDED BY A PATENT
SECTION I - PROTECTION RIGHTS
Article 41: The scope of protection awarded by a patent is
determined by the contents of the claims, interpreted in the light of the specifications
and drawings.
Article 42: A patent entitle its owners the right to prevent
third parties from manufacturing, using, offering for sale, selling or importing the
following:
- A product that is the subject matter of a patent,
- A process, or product directly obtained by a patented process.
§1 The patentee is further warranted the right to prevent third
parties from contributing to the practice of such acts referred to in this Article, by
others.
§2 Rights in a process patent are violated, insofar as item II is
concerned, when the holder or owner of a product fails to prove, through specific judicial
means, that it was obtained by a manufacturing process different from that protected by a
patent.
Article 43: The provisions of the previous article do not apply:
- Acts practiced by unauthorized third parties privately and without commercial purposes,
provided they do not result in damage to the economic interests of the patentee;
- Acts practiced by unauthorized third parties for experimental purposes, regarding
studies or to scientific or technological research;
- The preparation of medicine according to a medical prescription for individual cases,
executed by a qualified professional, as well as to a medicine thus prepared.
- A product manufactured in accordance with a process patent or a product that has been
placed on the internal market directly by the patentee or with his consent;
- Third parties who, in the case of patents related to living matter, use, with no
economic purposes, the patented product as the initial source of variation or propagation
for obtaining of other products; and
- Third parties who, in the case of patents related to living matter, use, market or sell
a patented product that has been lawfully introduced onto the market by the patentee or
its licensee, provided that the patented product is not being used for commercial
reproduction or propagation of such living matter.
Article 44: A patentee is warranted the right to obtain
compensation for the unauthorized exploitation of the subject matter of the patent,
including exploitation that occurred between the application date of publication and that
of grant of the patent.
§1 If the infringer obtains, by any means, knowledge of the contents
of a pending application, prior to its publication, the period of unauthorized
exploitation, for the purpose of compensation, will be counted from the date of
commencement of such exploitation.
§2 When the subject matter of a patent application refers to
biological material, deposited under the terms of the Sole Paragraph of Article 24, the
right to compensation will be conferred only when the biological material has been made
available to the public.
§3 The right to obtain compensation for unauthorized exploitation,
including with regard to the period preceding grant of the patent, is limited to the scope
of the subject matter of the patent, under the terms of Article 41.
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SECTION II - PRIOR USER
Article 45: A individual who is in good faith, prior to filing date
or to the priority date of a patent application, exploits its object in this country, will
be warranted the right to proceed such exploitation, in the previous manner and
conditions, with no burden whatsoever.
§1 The right conferred under this Article can only be transferred by
assignment or lease, together with the business or corporation, or part thereof that has
directly involved in exploitation of the subject matter of the patent.
§2 The right to which this Article refers will not be warranted to a
person who had knowledge of the subject of the subject matter of the patent upon its
disclosure under Article 12, provided that the application was filed within 1(one) year
from such disclosure.
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CHAPTER VI - PATENT NULITY AND CANCELLATION
SECTION I - GENERAL PROVISIONS
Article 46: A patent is null if granted contrary to the provisions
of this law.
Article 47: Nullity may not apply to all of the claims, a
condition for partial nullity being that the subsisting claims constitute subject matter
that is patentable per se.
Article 48: Nullity of a patent will be effective from its
corresponding application filing date.
Article 49: In the case of the provisions of Article 6 not
having been observed, the inventor may alternatively claim, in a action, adjudication of
the patent.
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SECTION II - ADMINISTRATIVE NULLITY
PROCEDURE
Article 50: Nullity of a patent will be declared administratively
when:
I. Any of the legal requisites have not been met;
II.The specification and the claims do not meet the provisions of
Articles 24 and 25, respectively;
III.The scope of protection of the patent extends beyond the contents
of the application as originally filed; or
IV. Any of the essential formalities indispensable for grant were
omitted during prosecution.
Article 51: The nullity procedure may be initiated ex-officio
or by the request of any person having legitimate interest, within 6 (six) months counted
from patent allowance.
Sole Paragraph: The nullity procedure will continue even
beyond extinction of patent.
Article 52: The patentee will be notified to respond within a
period of 60 (sixty) days.
Article 53: Independently of a reply having been filed, once the
period determined in the preceding Article has elapsed, INPI (BRAZILIAN PTO) will issue an
opinion, notifying the patentee and the applicant to reply within a period of 60
(sixty) days.
Article 54: Once the period of time provided for in the
preceding Article has elapsed, even if no replies have been submitted, the process will be
decided by the President of the INPI (BRAZILIAN PTO), terminating the administrative
instance.
Article 55: The provisions of this Section apply, where
appropriate, to certificates of addition.
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SECTION III - JUDICIAL CANCELLATION
PROCEEDINGS
Article 56: Cancellation proceedings can be started at any time
during the life of a patent by the INPI (BRAZILIAN PTO) or by any third party having
legitimate interest.
§1 Cancellation of a patent may be disputed at any time, as
matter for defense.
§2 The judge may, as a preventive or incidental ruling , determine the
suspension of the effects of a patent, provided that relevant procedural requirements are
properly complied with.
Article 57: Cancellation actions will be entered in Federal
Courts, and INPI (BRAZILIAN PTO), when not a plaintiff, will intervene in the suit.
§1 The period for the defendant to reply will be 60 (sixty) days.
§2 Once the decision on a cancellation procedure becomes final ( res
judicata), INPI (BRAZILIAN PTO) will publish its conclusion for the benefit of third
parties.
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CHAPTER VII - ASSIGNMENT AND RECORDINGS
Article 58: A patent application or patent, the contents of which
are indivisible, may be assigned in whole or in part.
Article 59: INPI (BRAZILIAN PTO) will carry out the
following recordings:
- Assignments, recording complete qualifications of the assignee;
- Any limitation or burden applicable to the application or patent; and
- Changes of name, headquarters or address of the applicant or patentee.
Article 60: Recordings will be effective in regard to third
parties as from the date of their publication.
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CHAPTER VIII - LICENSES
SECTION I - VOLUNTARY LICENSES
Article 61: A patentee or applicant may execute a license contract
for exploitation.
Sole Paragraph: The licensee may be entitled by patentee
with all powers to act in defense of the patent.
Article 62: A license agreement must be recorded with INPI
(BRAZILIAN PTO) in order to be effective in regard to third parties.
§1 Such recording will be effective in regard to third parties
from the date of its publication.
§2 A license agreement need not be recorded with the INPI
(BRAZILIAN PTO) for the purpose of validating a proof of use.
Article 63: Any improvement included in a licensed patent
belongs to the person who made it, the other contracting party being guaranteed the
right of preference for licensing purposes.
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SECTION II - OFFER TO LICENSE
Article 64: A patentee may request INPI (BRAZILIAN PTO) to place
his patent under offer with a view to its exploitation.
§1 INPI (BRAZILIAN PTO) will promote publication of the offer..
§2 No exclusive voluntary license contract will be recorded by INPI
(BRAZILIAN PTO) without the offer being withdrawn by the patent owner.
§3 No patent subject to an exclusive voluntary license may be made the
subject of an offer.
§4 The patent owner may withdraw the offer at any time prior to the
express acceptance of its terms by an interested party, whereby the provisions of Article
66 will not apply.
Article 65: Should patentee and licensee come not to terms as
regards remuneration of license, such remuneration can be arbitrated by the INPI
(BRAZILIAN PTO) upon request of the parties.
§1 For the purpose of this article, INPI (BRAZILIAN PTO) will take
into account the provisions of § 4 of Article 73.
§2 The remuneration may be reviewed after 1 (one) year of it being
established.
Article 66: A patent under license offer will have its annuity
fees reduced by one half during the period between the offer and grant of the first
license of any type.
Article 67: The patentee may request cancellation of the license
if the licensee does not initiate effective exploitation within 1 (one) year of the grant
of the license; interrupts exploitation for a period longer than 1 (one) year or else, if
conditions for exploitation are not obeyed.
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SECTION III - COMPULSORY LICENSES
Article 68:A patentee will be subject to having its patent
compulsorily licensed if he exercises rights resulting therefrom in an abusive
manner or by means of abuse of economic power proven under the terms of the law by an
administrative or court decision.
§1 The following may also result in a compulsory license:
- Non-exploitation of the subject matter or the patent in the territory of Brazil, by lack
of manufacture or incomplete manufacture of the product or, furthermore, by lack of
complete use of a patented process, except in the case of non-exploitation due to economic
unfeasibility, when importation will be permitted; or
- Commercialization that does not meet the market needs.
§2 The license can only be requested by a party with legitimate
interest and that has the technical and economic capacity to carry out the efficient
exploitation of the subject matter of the patent, which should be predominantly
destined for the internal market, save for exception provided for in item I of the
previous paragraph.
§3 In the case that a compulsory license is granted due to abuse of
economic power, a period of time, limited to that provided for in article 74, will be
guaranteed to a licensee proposing to manufacture locally, to proceed with importation of
the subject matter of the license, provided it has been placed on the market directly by
the patentee or with his consent.
§4 In the case of importation for exploitation of a patent and in the
case of importation provided for in the preceding paragraph, the importation by third
parties of a product manufactured according to a process or product patent will equally be
allowed, provided it has been placed on the market directly by the patentee or with his
consent.
§5 A compulsory license, to which §1 refers, may only be requested
after 3 (three) years form grant date.
Article 69: A compulsory license will not be granted if, at the
date of its request, the patentee:
- Justifies non-use for legitimate reasons;
- Proves that serious and effective preparations for exploitation have been carried out;
or
- Justifies lack of manufacture or commercialization due to legal obstacles.
Article 70: A compulsory license will also be granted when the
following hypotheses are shown to exist cumulatively:
- A situation of dependency of one patent on another is characterized.
- The subject matter of the dependent patent constitutes a substantial technical advance
in relation to the earlier patent; and
- The patentee does not come to an agreement with the patentee of the dependent patent for
the exploitation of the earlier patent.
§1 For the purposes of this Article, a dependent patent is considered
to be that which exploitation depends necessarily on the use of the subject matter
of its parent patent.
§2 For the purposes of this Article, a process patent may be
considered as dependant on a patent for the respective product, as also a product patent
may be dependent upon a process patent.
§3 The owner of a patent licensed under the terms of this Article will
have the right to a compulsory cross license under the dependent patent.
Article 71: In cases of national emergency or public interest,
declared in an act of the Federal Executive Authorities, insofar as the patentee or his
licensee does not meet such demand, a temporary ex-officio non-exclusive compulsory
license for the exploitation of the patent may be granted, without prejudice to the rights
of the respective patentee..
Sole Paragraph: The act of grant of the license will
establish its tem of validity and the possibility of extencion.
Article 72: Compulsory licenses will always be granted without
exclusivity. In this case, sub-licensing not being permitted.
Article 73: A request for a compulsory license must
indicate the conditions offered to the patentee.
§1 Once a request for license is filed, the patentee will be notified
to respond within a period of 60 (sixty) days, at the end of which, in the absence of such
response, the request will be deemed as accepted under the conditions offered.
§2 An applicant for a license who alleges abuse of patent rights or
abuse of economic power must submit documented evidence.
§3 If a compulsory license is requested on the basis of lack of
exploitation, it will be up to the patent owner to prove exploitation.
§4 If a contestation is filed, INPI (BRAZILIAN PTO) may take the
necessary steps, including the designation of a committee that may include experts
independent from the INPI (BRAZILIAN PTO), with a view to arbitrating the remuneration to
be paid to the patentee.
§5 The organs and entities of the direct or indirect, federal, state
and municipal public administration will provide INPI (BRAZILIAN PTO) with such
information as may be requested assisting in the arbitration of remuneration.
§6 In arbitrating remuneration, the circumstances of each case will
necessarily take into account the economic value of the license granted.
§7 Once the process is started, INPI (BRAZILIAN PTO) will reach a
decision regarding the grant and the conditions of the compulsory license within a
licensed period of 60 (sixty) days.
§8 Appeals against decisions granting a compulsory license will not
suspend the effect of said decision.
Article 74: In the absence of legitimate reasons, the licensee
must initiate exploitation of the subject matter of the patent within a period of 1 (one)
year from the grant of the license, however, interruption for equivalent time period
is allowed.
§1 The patentee may request revocation of the license if the
provisions of this Article are not met.
§2 The licensee will be vested with all powers to act in defense if
the patent.
- After grant of a compulsory license, the assignment thereof will only be permitted when
effected together with assignment, transfer or lease of the business or corporation
exploiting the patent.
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CHAPTER IX - PATENTS OF INTEREST TO NATIONAL
DEFENSE
Article 75: A patent application originated in Brazil, the object
of which is of interest to national defense will, be processed in secrecy and will
not be subject to publications provided for in this law.
§1 INPI (BRAZILIAN PTO) will immediately forward the application
to a qualified government agency for the purpose of issuing an opinion regarding secrecy
within 60 (sixty) days. Upon expiration of such time period without receiving an
opinion from that agency, the application will be processed on an ordinary basis.
§2 Except when the express authorization is given by a qualified
government agency, the filing of a patent application abroad, which subject matter is
deemed of interest to national defense, as well as its disclosure, is prohibited.
§3 Exploitation and assignment of an application or patent of interest
to national defense are subject to prior authorization by a qualified government agency,
due compensation being guaranteed whenever this implies a restriction to the rights of the
applicant or patentee.
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CHAPTER X - CERTIFICATE OF ADDITION OF AN
INVENTION
Article 76: Upon payment of a specific fee, the applicant or patent
owner of a patent of invention may request a certificate of addition to protect an
improvement or development introduced in the subject matter of the invention, even if
lacking inventive activity, provided that it shares the same inventive concept.
§1 If publication of the original application has already taken place,
the application for a certificate of addition will be published immediately.
§2 Examination of the application for a certificate of addition will
comply with the provisions of Articles 30 to 37, without prejudice to the provisions of
the preceding paragraph.
§3 An application for a certificate of addition will be rejected if
its subject matter does not involve the same inventive concept.
§4 The applicant may, within the time period for appeal, upon payment
of the corresponding fee, request the conversion of an application for a certificate of
addition into a patent application that will benefit from the date of filing of the
application for the certificate of addition.
Article 77: A certificate of addition is accessory to the
patent, carries the same expiration date, being part thereof for all legal purposes.
Sole Paragraph: In a nullity process, the patentee may
request that the subject matter contained in the certificate of addition be examined to
verify the possibility of its preserving its validity without prejudice to the patent
validity term.
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CHAPTER XI - EXTINCTION OF PATENTS
Article 78: A patent shall extinguish by:
- Expiration of the term of protection
- Waiver by the patentee, without prejudice to the rights of third parties;
- Cancellation;
- Non-payment of the annual fee, within the periods provided for in §2 of article 84 and
in article 87; and
- Non-observance of the provisions of article 217.
Sole Paragraph: Once a patent is extinct, its subject
matter falls within the public domain.
Article 79: Waiver will only be permitted if it does not
prejudice the rights of third parties.
Article 80: A patent will be cancelled ex-officio, or
upon request of any party with a legitimate interest if, after 2 (two) years from the
grant of the first compulsory license, such time period has not been sufficient to prevent
or correct abuse or misuse, save for legitimate reasons.
§1 A patent will expire if its exploitation has not been initiated up
to the date of cancellation request or of the ex-officio cancellation proceedings
are institutedd by the INPI (BRAZILIAN PTO).
§2 In cancellation proceedings started by request of a party having a
legitimate interest, the INPI (BRAZILIAN PTO) may continue with such proceedings
even if the request is withdrawn by the interested party.
Article 81: The patentee will be notified to respond to the
cancellation request within a period of 60 (sixty) days, in which period of time the
patent owner must submit proof of exploitation.
Article 82: A decision will be issued within 60 (sixty) days
counted from lapse of time period mentioned in the preceding Article.
Article 83: A decision on a cancellation procedure will be
effective as from the date of its request or from that of publication of the
commencement of an ex-officio procedure.
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CHAPTER XII - ANNUAL FEES
Article 84: The applicant and patentee are subject to the payment
of annual renewal fees, as from the beginning of the third year from filing date.
§1 Advance payment of annual fees will be regulated by the INPI
(BRAZILIAN PTO).
§2 The payment should be effected within the first 3 (three) months of
each annual period, but may still be effected within the following 6 (six) months,
independently of notification, by payment of an additional fee.
Article 85: The provisions of the preceding Article apply to
international applications filed under a treaty effective in Brazil, the payment of annual
fees due before the date of entry into national phase having to be made within a time
period of 3 (three) months from that date.
Article 86: Failure to pay an annual fee, under the terms of
articles 84 and 85, will result in shelving of application or extinction of the patent.
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