BRPTO New Guidelines For The Recording Of Agreements

The BR PTO (the Brazilian Patent and Trademark Office) has just released new instructions about the registration of international agreements involving industrial property. It appears that the BR PTO will adopt a less interventionist character, especially with respect to the limitation imposed on the remittance of royalties abroad.

With the publication of Normative Act 70/2017, on April 12, 2017 (PDF in Portuguese), the BR PTO has established a new administrative procedure for the recording of licences and assignments of industrial property rights, as well as for the registration of unpatented technology and franchise agreements.

It is important to remember that, since its formation, the BR PTO has had the jurisdiction and the authority to record and/or register agreements that involve industrial property rights, as established by Law 5648, of 1970. The prior registration of these agreements is mandatory and indispensable in order for BACEN to authorize the remittance of payments in a foreign currency.

Considering the time that the BR PTO has operated in the recording of agreements, it cannot be said that the issue of formal instructions about the subject matter is a novelty. Before Normative Act 70/2017, the most recent instruction for the recording and registration of agreements was published in 2013, i.e., not long ago. So much so, that it is not difficult to recognize in Normative Act 70/2017 several instructions that were already applied in 2013.

Even so, although it does not deal with precisely new subject matter, the publication of Normative Act 70/2017 represents a significant landmark in the history of the BR PTO, especially with respect to its well-known role as a regulator of technology transfer and as an intervenor in the conditions of contractual negotiation.

This is because a large part of the restrictive understandings of the BR PTO, especially those referring to the remittance of royalties abroad that resulted in interference in the free negotiation of agreements by parties, were based on the interpretation of the tax legislation and monetary control.

For many years, the BR PTO applied the deductibility percentages described in Ordinance 436/58, of the Ministry of Finance, as limits to the amount of remuneration due in agreements that involved technology transfer.

As is well-known, Ordinance 436...