Related Practice Area
Brazilian PTO Normative Act No. 070/2017
May 25, 2017
The Brazilian Patent and Trademark Office (INPI) issued and published Normative Act No. 070/2017 with new rules governing Recordal of Industrial Property Right (IPR) Licenses, Technology, Technology Transfer and Franchise Agreements with the Office. Although issued on April 11, 2017, the new rules will enter into force only as from July 1st, 2017.
The main change in the recordal proceedings introduced by Normative Act No. 070/2017 is, as a matter of fact, the change of the Brazilian PTO’s role in the recordal.
The Normative Act now clearly states that the Brazilian PTO will not analyze the terms and conditions of the agreements submitted for recordal and will not apply the fiscal and tax provisions it used to apply in the recent past. According to the new rules, the Brazilian PTO will merely record the agreements as they are and the corresponding Certificate of Recordal will contain a “remark” with the following statement: “The Brazilian PTO did not analyze this agreement in light of the legislation relating to fiscal and tax matters and to remittance of moneys to abroad”.
We decided to take some time to communicate the issuance of Normative Act No. 070/2017 to our clients, because it was uncertain if the provisions of fiscal and tax matters, as well as governing remittance of moneys to abroad, would still be applied and, in the affirmative, by which governmental entity.
Only recently the President of the Brazilian PTO clarified that the said provisions will still be applied – and therefore should be observed by the parties of the agreements – by the Brazilian IRS and Central Bank. The main applicable fiscal and tax provisions are, namely:
Therefore, although this change in the Brazilian PTO’s role in the recordal of agreements is welcome, we encourage our clients to take a conservative approach when preparing agreements that require recordal with the Brazilian PTO, in order to avoid drawbacks or problems either to receive royalty payments or to deduct the same in Brazil.
Should you require further clarification in relation to this matter, please do not hesitate to contact us at email@example.com or firstname.lastname@example.org.