Recordal of Agreements at the INPI: update and necessary requirements for a fast procedure
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1 Recordal of Agreements at the INPI: update and necessary requirements for a fast procedure Lia de Medeiros General Coordinator of Technology Contracts Instituto Nacional da Propriedade Industrial INPI
2 The purpose of the talk is to present the role of the INPI in licensing, transfer of technology and franchising agreements, to furnish an overview of the ian legislation regarding this matter, showing the types of contracts existing rules, the requirements for non-residents in and procedures for registration at the INPI
3 Agenda The role of the INPI in the contracts of intangible assets effects of the recordal s ian legislation non-residents in contracts at INPI
4 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-resident in The Role of the INPI in the Contracts of Intangible Assets
5 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-resident in Law nº 9279/96 The main purpose of the INPI is to execute the norms governing industrial bearing in mind its social, economic, legal and technical function, as well as rule on the advisability of signing, ratification and termination of conventions, treaties, and agreements on industrial. Title I - the grant of patents and the license of contracts for exploitation, Title II - the grant of industrial designs and the license of contracts for exploitation, Title III the grant of trademarks registration and the license of contracts for use, Title V crimes against industrial and unfair competition, Title VI the recordal of transfer of technology and franchising contracts.
6 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-resident in INPI S MISSION To promote the use of the Intectual Property System as a tool for capacity building and competitiveness, stimulating innovation in order to increase the ian technological, economic and social development
7 National Institute of Industrial Property (INPI) Directorate of Contracts, Geographical Indications and Other Registers (DICIG) Patents Directorate (DIRPA) Trademark Directorate (DIRMA) Directorate of Cooperation for Development (DICOD) General Coordination of Geographical Indications and Registers (CGIR) General Coordination of Technology Contracts (CGTEC) Mandate (Decree No. 7356, November 12, 2010) Endorse license agreements of intellectual rights and register contracts involving technology transfer, technical services and franchising, according to Law 9279, 1996; Offer orientation to micro, small and medium enterprises, science and technology institutions and government agencies on best practices for the licensing of industrial rights and other forms of technology transfer, including compulsory licenses; Cooperate with the activities of INPI and other institutions to promote participation of ians in the Intellectual Property Rights System.
8 National Institute of Industrial Property (INPI) Directorate of Contracts, Geographical Indications and Other Registers (DICIG) Patents Directorate (DIRPA) Trademark Directorate (DIRMA) Directorate of Cooperation for Development (DICOD) General Coordination of Geographical Indications and Registers (CGIR) General Coordination of Technology Contracts (CGTEC) Administrative support services (SACOT) Division of License Endorsement (DIALI) Division of registration contracts (DIREC) Coordination of technical orientation (COTEC) Formal requirements for contracts and administrative supporting services Contracts of industrial rights and franchising Contracts of know-how and technical assistance services Training, advice and supply of information
9 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-resident in effects of the recordal of the agreement at the INPI
10 The role of the INPi in the contracts ogf intangible assetsl effects of the recordal legislation in non-resident in Legal effects of recordal of validity of the contract to third parties Articles 62, 121, 140 and 211 of Law 9279/96 deduction of expenses for the contractor Decree 3000/99 - Ministry of Finance recognize payments abroad in the category of royalties and technical assistance Article 9 of Law No /62 Resolution 3844/10 of the Central Bank of
11 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-resident in in
12 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-resident in Main contractual scope Technology commerce (buying and selling of intangibles) Industrial Property Rights Knowledge not protected by Industrial Property Rights and other intangible assets
13 The role of the INPI in the contracts of intangible assets effects of recordal legislation in non-resident in Intellectual Property Rights (IPR s) in Trademarks, patents, industrial designs* protected by the Industrial Property Law Knowledge and intangible assets not protected by Intellectual Property Rights (IPR s) in Know-how, trade secrets, technical assistance and technical solutions not disseminated in the ian market protection against crimes of unfair competition * rights granted by the INPI
14 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-resident in ian Legislation
15 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-resident in LICENSING OF INDUSTRIAL PROPERTY RIGHTS * EP PATENT EXPLOITATION DI INDUSTRIAL DESIGN EXPLOITATION UM USE OF TRADEMARK SUPPLY OF TECHNOLOGY CONTRACTS* FT KNOW-HOW AND TRADE SECRETS SAT CONTRACTS FOR THE PROVISION OF SCIENTIFIC AND TECHNICAL ASSISTANCE FRA FRANCHISING (Law 8955/94) * Industrial Property Law, 9279/96 and Normative Instruction 16/2013
16 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-resident in contracts involving non-residents in
17 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-residents in Convalidation contract in consular legalization and notarization ian Business Law recording contract by INPI requirement to make payments abroad regulations of Central Bank of Companies with majority control of capital and subsidiaries of multinational companies (MNC's) payments for royalties and technical assistance limited to the percentage of tax deduction (maximum of 5% on the net sales price) Income Tax Regulations
18 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-residents in Principal Clauses of a Contract* Object of the Contract Remuneration or royalties Term of the Contract * Normative Instruction 16/2013
19 The role of the INPI in the contracts of intangible assets effects of the recordal legislation in non-resident in contracts at INPI
20 application Formal examination Technical examination Certification Formal demand technical demand Rejection Answer the formal demand Answer the technical demand Archiving of application submission of documents by any of the contractual parties to INPI electronic submissions from 2013
21 Application Formal examination Technical examination Certification Formal demand Technical demand Rejection Answer the formal demand Answer the technical demand Archiving of application analysis of the formal requirements of the documents decision time: 4 days (maximum)
22 Application Formal examination Technical examination Certification Formal demand Technical demand Rejection Answer the formal demand Answer the technical demand Archiving of application time to answer: 60 days
23 Application Formal examination Technical examination Certification Formal demand Technical demand Rejection Answer the formal demand Answer the technical demand Archiving of application analysis of contract terms based under de law time to answer: 30 days (maximum)
24 Application Formal examination Technical examination Certification Formal demand Technical demand Rejection Answer the formal demand Answer the technical demand Archiving of application time to answer: 60 days
25 Application Formal examination Technical examination Certification Formal demand Technical demand Rejection Answer the formal demand Answer the technical demand Archiving of application legal effects of recordal from the publication in the Journal of Industrial Property INPI (RPI)
26 Recordal of Agreements at the INPI: update and necessary requirements for a fast procedure Thank you for your attention! Lia de Medeiros lia@inpi.gov.br
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