Patent
Who can file patents in Brazil?
Industrial property in Brazil is regulated by Federal Law No. 9,279, of 1996. Known as the Industrial Property Law (LPI), it allows any citizen or company (local or foreign) to file patents in Brazil for inventions and utility models (read more about this below).
Article 217 of the LPI establishes that “a person domiciled abroad must appoint and maintain a duly qualified attorney domiciled in the country (Brazil), with powers to represent him/her administratively and judicially, including to receive summons”.
This is necessary not only to initiate the patent process in Brazil, but also to follow it more efficiently and objectively with the body responsible for registering industrial properties, the INPI (National Institute of Industrial Property).
In this sense, it is essential that inventors or industrial property specialists interested in applying for patents in Brazil seek an office authorized in Brazilian territory for representation before INPI-BR.
Although the regulation of the IP Agent profession in Brazil is defended by several professional judges, by the INPI itself and by associations, such as ABAPI (Brazilian Association of Industrial Property Agents) and ABPI (Brazilian Association of Intellectual Property), after a sentence handed down in a Public Civil Action (Resolution No. 141/2014 published on 11/11/2014), the INPI no longer performs exams and registrations of Industrial Property Agents (API), therefore, not only lawyers or IP agents, but any natural person or company with an address in the country and capacity can act as an attorney/representative before the Institute, both for trademarks and patents.
International Laws and Treaties
Registering patents in Brazil is becoming increasingly easier. The country strives year after year to offer better conditions for inventors and international investors to bring their innovations to the Brazilian market.
Currently, Brazil is a signatory to the main international agreements, such as the Paris Convention (CUP), the Patent Cooperation Treaty (PCT) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).
This means that patent applicants in Brazil will enjoy the following advantages:
Principle of priority
Patent priority in Brazil up to 12 months after the date of the first application in any other CUP member country.
Equal treatment
Foreigners who apply for patents in Brazil receive the same treatment as local inventors.
Independence of patent applications
The granting or rejection of a patent in another country has no influence on the patent process in Brazil.
International search and preliminary examination
Search and preliminary examination reports help assess the chances of success of a patent application before proceeding with the applications and the Brazilian INPI is an International Search Authority (ISA) under the Patent Cooperation Treaty (PCT), therefore, the INPI has the authority to conduct international searches on patent applications that are filed under the PCT agreement, providing an international search report that is used by applicants to assess the patentability of their inventions before proceeding with patent proceedings in different countries. In addition to acting as an ISA, the INPI can also act as an International Preliminary Examining Authority (IPEA), offering a preliminary examination of the patentability of an international patent application under the PCT.
Law No. 9279 of May 14, 1996, known as LPI – Industrial Property Law, regulates the rights and obligations related to industrial property in Brazil. It is important to emphasize that the country is constantly updating its treatment of intellectual property. In fact, it maintains an active Interministerial Group on Intellectual Property (GIPI), created in 2019, which aims to coordinate the government’s actions in this area and enhance the registration of all types of property, including patents in Brazil.
In March 2021, Brazil became a party to the Nagoya Protocol, which regulates access to and sharing of benefits, whether monetary or not, from genetic resources of biodiversity. Adherence to the Protocol complements the Biodiversity Law (Law 13,123/2015), which requires registration with CGen for intellectual property protection.
Brazil also signed, on May 24, 2024, the Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge during the WIPO Diplomatic Conference in Geneva, requiring patent applicants to disclose the origin of genetic resources and traditional knowledge used.
In addition, the Legislative Decree Project (PDL 466/2022), which authorizes Brazil’s accession to the WIPO Budapest Treaty, is currently under consideration in the Chamber of Deputies. This treaty aims to facilitate the filing of patents involving microorganisms, such as those related to vaccines and medicines.
Patent Prior Art Search
If you have already filed a patent in another country, you can benefit from all the international agreements to which Brazil is a signatory. However, if this is your first application worldwide, it is recommended that you conduct a patent prior art search.
The search is crucial from the development of an invention and even before the patent application, as it avoids wasting time and resources, as it verifies whether there is already an identical or similar concession or deposit in favor of another person or company, in addition to gathering relevant information on the global scenario.
Brazilian law determines that only inventions or utility models that meet the requirements of “novelty, inventive step and industrial application” are patentable. Therefore, if the search for prior art identifies that there is already a registration identical to yours, the invention or utility model ceases to be patentable because it does not meet the novelty requirement.
This prior research also brings benefits, such as the possibility of identifying the state of the art related to the invention. In Brazil, the Industrial Property Law defines the state of the art as “everything made accessible to the public before the date of filing of the patent application, by written or oral description, by use or any other means, in Brazil or abroad”.
Considering only patent applications in Brazil, there is a remark: the disclosure of an invention or utility model that occurred within the filing or priority period of the patent application (12 months before filing in the country) will not be considered state of the art. For more information on this subject, see the Grace Period topic (Art. 12 of the LPI).
The search for prior art can prove that your invention or utility model meets the requirements of novelty and inventive step, providing greater security for your first patent filing, in Brazil or abroad.
Patent Surveillance (SENTINEL)
We have technological monitoring used to search for patent documents that is based on keywords and international classifications to identify and analyze the information contained in the documents that are relevant and a priority for the interested party’s segment.
This surveillance, nicknamed SENTINEL, has international scope and uses public and private search software, which includes a portfolio with a database of patent and non-patent documents from around the world. Initially, a complete macro report of the patents requested is provided, separated by technological field. It is adjustable according to need, and can be monthly, bimonthly or quarterly.
It is extremely important because it provides essential information for innovative companies and inventors, which creates a solid basis for verifying the status of a given technology, thus avoiding undue expenditure of resources on technologies already created. Among the various benefits received through this method are the optimization of R&D (Research and Development) resources, the identification of technologies that can be explored in the national territory without violating patent rights, updates on technological developments in different sectors, the search for technical solutions that exist in the state of the art and, of course, the identification of trends.
It is possible to request a brief demonstration of the system and all its tools, presenting arguments and statistical graphs demonstrating the positioning of the competition, contact us to find out more.
Types of Patents in Brazil
• Invention Patent
The invention patent protects a new solution to an existing technical problem, with industrial application and inventive activity (not resulting in an evident or obvious manner from the state of the art), that is, it is the protection of a new technical-functional effect, which may refer to industrial products and activities.
• Utility Model
The Utility Model Patent protects an object of practical use or part thereof, which presents a new form or arrangement, and must be three-dimensional and involve an inventive act (not arising in a common or vulgar manner from the state of the art) that results in a functional improvement in the use or manufacture of a product, in addition to being susceptible to industrial application.
Therefore, processes, systems and methods must be protected as invention patents in Brazil, and not as utility models.
• Certificate of Addition
The certificate of addition is an improvement made to the invention patent, even if devoid of inventive activity, as long as the subject matter has the same inventive concept; its validity and remuneration follow the dates of the “parent patent”, it is an accessory to the invention patent.
• Identification of the type of protection by number
It is possible to identify the nature of patent applications in Brazil through the numerical assignment generated by the INPI system after the letters “BR”.
Invention patents, which were previously represented by “PI”, have the codes: BR 10 (invention applications filed directly), BR 11 (applications filed via PCT) and BR 12 (divided invention applications).
Utility models (formerly “MU”) are represented by codes BR 20 (directly filed applications), BR 21 (PCT applications) and BR 22 (divided applications).
Certificates of addition (formerly C1, C2, etc.) are given the code BR 13.
What is not patentable in Brazil
It is essential that inventions meet the requirements of novelty, inventive step and industrial application. Furthermore, the Brazilian Industrial Property Law does not consider inventions or utility models, e.g., the following are not patentable:
• Discoveries, scientific theories and mathematical methods;
• Purely abstract conceptions;
• Commercial, accounting, financial, educational, advertising, lottery and inspection schemes, plans, principles or methods;
• Literary, architectural, artistic and scientific works or any aesthetic creation;
• Computer programs;
• Presentation of information;
• Game rules;
• Operative or surgical techniques and methods, as well as therapeutic or diagnostic methods, for application to the human or animal body;
• The whole or part of natural living beings and biological materials found in nature, or even isolated from it, including the genome or germplasm of any natural living being and natural biological processes.
In addition to the items provided above in Art. 10 of the LPI, Art. 18 of the same legal diploma also describes that inventions that go against morality, good customs, security, public order and health are not patentable, nor are matters related to the transformation of the atomic nucleus and all or part of living beings, except transgenic microorganisms, which are registrable as long as they comply with the patentability requirements.
Documents
Brazil adopts the “first to file” principle, that is, if two people file a patent application for an identical invention, the patent will be granted to the one who files first.
Patent registration in Brazil is carried out with the INPI (National Institute of Industrial Property), a federal agency responsible for judging and granting inventions in the country. The required documents are:
• Power of attorney on behalf of the Depositor (no notarization or legalization required);
• Full name and address of the Applicant;
• Full name, nationality, address and profession of the inventors;
• Summary, report, claims and drawings translated into Portuguese;
• Official Copy of Priority (if applicable) translated into Portuguese*;
• International Publication (WO) for National Phase of PCT (if applicable and if PCT already published);
• Assignment of Priority** (if applicable).
* The priority document may be replaced by the access code to the DAS – WIPO Digital Access Service, however, a simple translation of the deposit certificate, the equivalent document, or a declaration as to the accuracy of the content must still be presented.
INPI-BR only accepts digital signatures from accredited Certification Authorities; therefore, not every digital signature is valid.
According to Article 217 of the Industrial Property Law (LPI), an individual or legal entity residing outside the country must appoint a local representative. The power of attorney must grant powers for the administrative and judicial representation of the applicant, including the reception of summons, under risk of filing the application or cancellation of the registration.
Attention: If the identification of the depositor(s) and inventor(s) uses a writing system other than the Latin alphabet, transliteration of the characters is necessary.
The writing systems that require the most transliteration are Arabic, Devanagari, Hebrew, and Cyrillic (Russian, for example). Romaji (transliteration of Japanese) and Pinyin (transliteration of Chinese) are excellent methods for adapting languages to the Latin alphabet.
For example, in the case of languages such as Turkish and Hungarian, it is possible to reproduce the exact character using the most similar letter, for example, the letters “Ğ” (phoneme /t/) and “Ş” (phoneme /ʃ/) of the Turkish alphabet can be transliterated to G and S; the letter “ß” (phoneme /s/) of the German alphabet can be transliterated to “B”, the latter, as it has the sound of “s”, can also be transliterated to “SS”. This transliteration avoids requirements and, therefore, delays in the process.
** Assignment
If priority is obtained by assignment or if the applicant changes after the PCT filing date and the change has not yet been officially notified by the International Bureau (PCT/IB/306), the assignment document or the assignment declaration or an equivalent document must be submitted, accompanied by a simple translation, as failure to do so will result in the loss of priority.
Priority obtained by assignment must be proven together with the priority document. If the applicant in the National Phase is different from the one who filed the application used as the basis for the priority, a copy of the document proving the assignment of the priority right, signed by all holders of the assigned priority, must be presented. This document must be translated into Portuguese (notarization/legalization is not required).
The assignment must be submitted within 60 days of entering the Brazilian National Phase, regardless of notification or requirement.
Alternatively, the assignment may be evidenced by the declaration in Table VIII (iii), in accordance with Rule 4.17 (iii) of the PCT Implementing Regulations, provided that it is signed by all holders.
Failure to present the document assigning the claimed priority will result in the declaration of loss of priority. In the event of any irregularities in the assignment document presented, a requirement will be issued for the defect to be corrected.
Subsequent Documentation
If the Power of Attorney, Priority Document, Assignment of Priority or Translation of the application are not presented at the time of filing, they may be filed within 60 (sixty) days from the initial filing.
Important: If, at the time of entry into the National Phase, at least the claims table or the descriptive report translated into Portuguese are not submitted, the international application will be considered as withdrawn in relation to Brazil, regardless of any notification or requirement.
Unionist Priority
The deadline for claiming priority is 12 (twelve) months from the foreign deposit.
Grace Period (Art. 12 of the LPI)
The grace period provides protection for inventions disclosed up to 12 months before the patent filing, in special situations. This means that an invention or utility model disclosed during these 12 months will not be considered prior art if the disclosure is made by the inventor himself or by third parties with information obtained directly from the inventor. The INPI may require a statement from the inventor about the disclosure, including details such as form, place and date, with or without evidence, which can also be provided at the time of filing the application.
The applicant may indicate the disclosure data made by the inventor in the National Phase application and this situation will not affect the novelty in Brazil. However, not all countries accept the grace period and the deadlines and hypotheses are also specific to each country.
To avoid problems, it is recommended not to disclose the invention before filing the patent application, especially if there is an intention to register the patent abroad
Grace Period in Practice
A 2013 patent application filed by our client was initially rejected by the INPI, which claimed that the invention had already been disclosed by another company on a YouTube channel, approximately 3 months before the filing of the Brazilian patent. Thus, we argued the grace period and obtained the reversal of the decision for granting.
Internal Priority (Art. 17 of the LPI)
Internal priority allows an initial patent filing in Brazil to be improved with a new application filed in Brazil within 12 months. This applies to invention patents or utility models originally filed in Brazil, provided that the initial application has not been published and has not claimed priority. The new application must be filed by the same applicant or his successors, and must include the reference to the previous application.
It is worth noting that internal priority does not affect or increase the term of union priority, therefore, the patent application abroad must be filed within 12 months from the filing of the initial application.
This institute only ensures that the new application is not affected (at INPI-BR) in relation to the novelty by the previous application, which will be considered as definitively filed. However, the internal priority only applies to the subject matter disclosed in the initial application, and does not extend to the new information of the invention. Furthermore, a patent application resulting from the division of the previous application cannot be used to claim priority.
Costs
Calculating patent fees in Brazil is a complex task due to the variety of fees applicable at different stages of the registration process, such as filing, technical examination and annual fees.
Despite this, it is clear that costs in Brazil are much lower than in foreign countries. This is yet another factor that makes patent applications in Brazil even more attractive for inventors and companies that want to protect their innovations with a lower financial burden.
With the support of local consultancy specialized in patents in Brazil, it is possible to have more precise and detailed information about the fees, which vary according to the type of patent requested, whether for an invention or a utility model. For filing the application, the federal fees are as follows:
A) National application for invention, utility model, certificate of addition of invention; and Entry into the national phase of the PCT:
– BRL 175 (Approx. USD 35) for legal entities*;
– BRL 70 (Approx. USD 14) for individuals (Brazilian and foreign).
B) Early publication (if necessary)
– BRL 175 (Approx. USD 35) for legal entities*;
– BRL 70 (Approx. USD 14) for individuals (Brazilian and foreign).
* Only for Brazilians: micro-enterprises, individual micro-entrepreneurs and small businesses, cooperatives, educational and research institutions; non-profit entities, as well as public bodies have a 60% reduction in the amount of the contribution.
C) For Utility Models (BRL 380, legal entity) and Certificates of Addition (BRL 190, legal entity), the examination fees are fixed, regardless of the number of claims. Invention Patents have a fixed value up to 10 claims and, for each additional claim, there is an additional cost, namely:
– Up to 10 (ten) claims: BRL 590, legal entity.
– Above 10 (ten) claims: Add an additional amount of R$100.00 per claim from the 11th to the 15th; R$200.00 per claim from the 16th to the 30th; and R$500.00 per claim from the 31st onwards.
Therefore, for a patent with 20 claims, for example, the value will be BRL 2,090, that is: BRL 590 (up to the 10th) + BRL 500 (from the 11th to the 15th) + BRL 1,000 (from the 16th to the 20th).
The full list of federal taxes can be found at the link:
Note: It is possible to make Voluntary Changes to the Set of claims until the payment of the technical examination fee. After this payment, the changes will only be accepted in order to comply with requirements or to reduce the scope of protection.
Analysis Time
The average analysis time is 5 to 6 years. However, the INPI offers priority processing options, such as: application subject to counterfeiting, PPH – Patent Prosecution Highway, applicant aged 60 or over, or with physical or mental disabilities, or even suffering from serious illnesses. More information on options for accelerating patent examination can be found at https://cnv.com.br/speeding-up-patent-examination-in-brazil/
As of January/2024, INPI-BR has adopted a new criterion for the patent application judgment queue. The order of processes to be judged is no longer by the date of filing of the application but by the date of the request for examination of the process.
The INPI’s objective with this regulation was to reduce the backlog to two years in the judgment of patent applications in 2026, according to its strategic planning for the three-year period (2024 to 2026) and to determine new dynamics for the voluntary changes limited by Art. 32 of the LPI to the date of the request for the technical examination.
Currently, decision times are 4.57 years from filing for national applications (residents); 6.03 years for national phase applications (non-residents) and 3.22 years from the request for examination (source: https://www.gov.br/inpi/pt-br/servicos/patentes/relatorios-gerenciais).
Since approximately 80% of patent applications filed with the INPI are from non-residents (PCT), the judgment time tends to reduce substantially for this class of applicants, since the INPI will form a single queue upon payment of the technical examination fee.
What are the advantages of paying for the exam in advance?
Have the patent application examined before a later-paying applicant.
Over the years, the backlog tends to fall substantially, which will make a big difference in terms of decision time.
We must remember that the payment of the technical examination fee is the third on the list of requests for the 1st examination. It is preceded by priority procedures and requests that have received a preliminary opinion from the INPI.
What are the disadvantages of paying for the exam in advance?
A patent application that is not mature enough (possibility of making internal priority within one year or voluntary changes based on examinations by other IP Offices) may wait to pay the examination fee for up to 36 months, counting from the filing date (or the international application).
Note: if the Examination fee has already been paid and the client is interested in doing the internal priority in the future, a second Examination fee must be paid (for the internal priority).
How should we analyze whether or not we should pay for the exam in advance?
Due to the robustness of the request (descriptive sufficiency) and the request strategy, see the advantages and disadvantages above and contact us.
Validity
Due to the robustness of the request (descriptive sufficiency) and the request strategy, see the advantages and disadvantages above and contact us.
• Patents: 20 years from the date of filing.
• Utility Model: 15 years from the date of filing
Observation: The sole paragraph of Article 40 of the Industrial Property Law (LPI) established two different terms for the validity of patents, 20 years from filing and at least 10 years from granting for invention patents and 15 years from filing and at least 7 years from granting for utility models.
However, in 2021, the Federal Supreme Court (STF) declared said paragraph unconstitutional through Direct Action of Unconstitutionality (ADI) No. 5529 and, therefore, the validity periods of patents in Brazil are always counted from the date of filing and no longer from the date of granting, however, there are still today some patents that were granted during the validity of this provision, therefore, it is important to check each case individually.
Stages of patent applications in Brazil
Registering patents in Brazil may seem like a complex process, especially for foreign inventors and investors who are not familiar with the INPI-BR system.
However, understanding the protocol steps and having qualified and personalized support in the country is essential for the success of the initiative. See below the steps to obtain patents in Brazil:
1. Preparation of the order
Before submitting a patent application to INPI, it is crucial to prepare all the necessary documentation, which includes:
• Detailed description of the invention;
• Technical drawings (if applicable);
• Claims that define the scope of protection desired;
• Summary of the invention.
2. Application deposit
• Filling in the order form;
• Payment of initial fees;
• Document protocol.
3. Formal Requirement
• If the examiner finds any formal detail to be adjusted, before the publication of the application, the INPI may issue a requirement, which must be complied with within 30 (thirty) calendar days from the first business day after such publication.
4. Publication of the application
• After the application has been filed and formally analyzed, the application will be published in the Industrial Property Journal (RPI) 18 months after the priority or filing date, making it accessible to the public. This step allows third parties to learn about the application and to file objections. It is possible to advance the publication of the application by paying an additional fee.
• It is important to remember that, in Brazil, the examination will not begin before 60 (sixty) days have passed since the publication of the patent application.
5. Subsidies against third party claims
• There is no specific deadline for submitting support against third-party applications.
With the publication of the patent application, and until the end of the examination, the submission of documents and information to support the examination will be permitted, demonstrating, for example, lack of inventive step and novelty.
• It is important to keep in mind the deadlines described in Analysis Time and submit your subsidies as soon as possible.
6.Technical examination
For patent applications in Brazil to be technically examined, the applicant must request the examination from INPI and pay the corresponding fee within 36 months of the filing date (or the international PCT filing date).
If the technical examination is not paid within the deadline, the application will be archived, however, it is possible to unarchive it within 60 days from the filing, upon payment of a specific fee and the technical examination, under penalty of definitive archiving of the application.
At this stage, the state of the art will be analyzed, the patentability requirements (novelty, inventive step and industrial application) will be verified and the claims and description will be examined. If the examination is not requested, the patent process will be archived (possible unarchiving, respecting the legal deadlines).
The results of the technical examination of patents in Brazil are published in the RPI. If there are any pending issues, the INPI issues formal or technical requirements that must be responded to by the applicant within the established deadline.
After analyzing all responses and documents, the INPI issues a decision. If the application meets all requirements, the patent is granted. Otherwise, the application may be subject to administrative or technical requirements.
6.1 Preliminary Technical Requirement (Orders 6.22 and 6.23)
Order 6.23 is an opinion with the result of a search carried out by another office or organization in other countries, requesting a response within 90 (ninety) days regarding the documents (patent and non-patent) indicated abroad. It is important to note that patent applications filed as of January 1, 2017 are subject to this type of requirement; however, at this stage, INPI-BR has not yet carried out the technical examination.
Order 6.22 is a requirement for applications that do not include documents mentioned in search reports from other Patent Offices, but which were searched by INPI-BR.
If the preliminary requirement (Orders 6.22 and 6.23) is not responded to within the deadline, the request is definitively archived.
6.2 Technical Requirement (Order 6.1)
When the examiner is convinced that the patent requirements (novelty, inventive step and industrial application) are present in the invention, however, there are still technical adjustments that meet the granting of the patent, INPI-BR will issue a dispatch 6.1, the deadline for compliance with the requirement is 90 days.
Failure to respond to the technical requirement results in the definitive archiving of the patent application.
6.3 Knowledge of Technical Opinion (Order 7.1)
If any patentability requirement (novelty, inventive step and industrial application) or any patentability condition of the application (unity of invention, descriptive sufficiency, clarity and precision of claims) is met, the examiner will issue a technical opinion, through dispatch 7.1.
The response to the opinion must be submitted within 90 days from the publication of the ruling in the Industrial Property Journal (RPI) and failure to respond will result in the definitive archiving of the application.
In Brazilian practice, it is not common to wait for more than two opinions from the examiner, unlike North American practice, for example. If the examiner is not convinced by the arguments presented in the statement against the knowledge of an opinion, the request will be denied (Order 9.2).
Once the examination is completed, a decision will be issued, granting or denying the patent application.
7.1 Rejection (Order 9.2)
If the application is denied, an appeal against the denial may be filed within 60 (sixty) days from the publication of the refusal. Appeals are decided by the President of INPI, thus concluding the administrative instance.
Regarding Restrictive Amendments to the Claims Framework to overcome the objections raised in the first instance examination, which must observe the following conditions
a. Amendments to the Claims Framework must have a causal link with the obstacles identified by the examiner in the first instance. In other words, the defense in the appeal must be related to the reason for the rejection of the patent application.
b. Only modifications that are logically restrictive derivations of the framework that is the subject of the denial may be presented. Matters discussed and not taken forward in the first instance may not be brought up in the appeal phase.
c. Only restrictions that are expressly provided for in dependent claims, or originating from the combination of independent/interconnected claims, are permitted. Restrictions originating from the specification and that are not expressed in the contested claim framework will not be accepted. Therefore, matter described in the specification may not be used to restrict the Claim Framework if it is not contained in a dependent claim.
d. Requests for a change of nature are not accepted at the appeal stage, unless the change has already been requested in the first instance and unduly denied. One tip is that this request should already be made in the first instance.
e. INPI will allow the presentation of documents, in the appeal phase, to prove inventive activity, such as laboratory tests.
7.2 Approval (Order 9.1)
If the request is granted, the fee must be paid within 60 (sixty) days from the date of granting. The fee may still be paid within 30 (thirty) days after this deadline, upon payment of an additional fee. If the granting is not paid in a timely manner, the request will be definitively archived.
7. Granting and issuing of the Letter Patent
After granting, the INPI issues the patent letter, an official document that proves the granting of patents in Brazil and details the rights granted to the holders.
It is worth noting that it is necessary to pay the annual fees during the period of validity of the patents in Brazil to keep them active, otherwise they may be extinguished.
Annuities
Patent maintenance fees are paid every year, starting from the 3rd year of existence of the national application or the international filing, if it is a PCT.
For example: PCT (International filing) made on 06/30/2024. Pay the annual fee from 06/30/2026 (third year of the patent) until 09/30/2026 (3-month term). If payment is not made within the deadline, there is still an additional period of 6 months for payment within the extraordinary term.
Regarding the national phases, when the international application is nationalized in Brazil and the first annual fee has already expired, payment must be made within 3 (three) months from the date of entry into the national phase. The remaining annual fees will be calculated based on the PCT filing date.
For example: Priority of 01/15/2024, PCT deposit on 01/16/2024. Deadline for the national phase is July 15, 2026, however, the opening of the deadline for payment of the annuity is on 01/16/2026 and the deadline is 04/16/2026. If the national phase is held on the last day of the deadline (on 07/15/2026), the annuity deadline will already be expired, however, by law, in fact this deadline will be 10/15/2026 (3 months after the national phase). The next annuity must be paid from 01/16/2027 to 04/16/2027, and so on.
If an annual fee is not paid, the process is archived/registration is extinguished. However, it is possible to restore the patent within 3 months after publication of the archiving or extinction, upon payment of the restoration fee in addition to the annual fee within the extraordinary period. After these 3 months, the application is archived (or the registration is extinguished) definitively.
The annual fees have a fixed value while requested and, in the case of registrations, the value is calculated depending on the year in which the registration is found
Note: Some countries (such as the USA) only require payment of fees after the patent is granted, however, this is not the case in Brazil.
Unity of the Application (Articles 22 and 23 of the LPI)
The application for a patent for an invention must refer to a single invention or a group of interrelated inventions that form a single inventive concept, as taught in Art. 22 of the LPI.
The application for a utility model patent must refer to a main model, which may have several distinct elements, but must maintain the technical-functional and bodily unity of the object, as described in Art. 23 of the LPI.
Divisional orders
In Brazil, a patent application may be divided into several applications, either by decision of the National Institute of Industrial Property or at the request of the applicant, until the end of the examination in the first instance. The divided applications will maintain the filing date and priority of the original application, if applicable, and divisions of already divided applications are not accepted by the INPI.
The divided application will be treated as being at the same procedural stage as the original application and each divided application must pay the corresponding fees.
Division of an application containing only one invention or a single utility model is not permitted if such division would result in mutilation or double protection. The division must specifically relate to the original application and may not include more matter than that disclosed in the original application. Applications divided outside these rules will be dismissed.
For this reason (risk of archiving) and since in Brazil it is possible to claim process, method, system and product in the same invention, as long as they maintain the same inventive concept (unity of invention), it is preferable to wait for the request from the INPI examiner to divide the application.
Descriptive sufficiency (Article 24 of the LPI)
The descriptive report of the patent application must describe the object clearly and completely, enabling a person skilled in the art to reproduce the invention. It must provide sufficient details for the realization of the invention and, if necessary, indicate the best way to carry it out.
A particular detail in Brazil is that, according to Normative Instruction 30/13, if necessary and if there are drawings, it is important to refer to the reference signs, use examples and/or comparative tables, relating them to the state of the art.
In the case of a utility model, the model must be described in a consistent, precise, clear and sufficient manner, with possible variants, with reference to the reference signs in the drawings.
It is important to emphasize that, if the descriptive sufficiency was not questioned in the offices/authorities cited in the preliminary requirement, article 24 of the LPI is considered to have been met. However, if the examiner still understands that there are irregularities related to the normative instructions and Guidelines for Examining Patent Applications of the INPI, in relation to the lack of descriptive sufficiency, he must associate it with article 24 of the LPI.
When the biological material that is crucial for the practical implementation of the patent application cannot be adequately described in the report and is not available to the public, it is necessary to supplement the report with the deposit of this material in an institution authorized by the INPI or indicated by an international agreement. It is important to note that if the information on the deposit of the biological material is not included in the descriptive report, the examiner may request it.
A technician in the field, according to the Brazilian patent manual, is someone who understands not only the invention and its references, but also the general technical knowledge available at the time of the application.
Clarity and precision of claims (Art. 25 of the LPI)
According to Article 25 of the LPI, “claims must be supported by the descriptive report, characterizing the particularities of the request and defining, in a clear and precise manner, the subject matter of protection”.
In Brazil, the claim must not only clearly and precisely define the characteristics to be protected, but also in a positive manner and must be fully supported by the descriptive report. Therefore, they must not include references such as “as shown in the drawings” or “as per the descriptive report”. Furthermore, they must not contain explanatory texts about the operation, simple use or advantages, nor expressions such as “characterized by not containing[…]”
Therefore, if the examiner understands that the claim is confusing or imprecise, it is necessary to rewrite it so that it is clearer, aligned with the report and without ambiguous and imprecise expressions.
To avoid infringement due to lack of clarity and precision of claims, in the case of invention patents implemented by Computer Program, the claims must not include excerpts of the source code (infringement of item V of Article 10 of the LPI). Also, product claims must claim the technical means used and process claims, a set of actions.
Independent claims may reference one or more claims, if this reference does not affect the clarity of the claim.
Other tips can be found in Tips for preparing reports and claims in accordance with Brazilian standards.
Voluntary Changes and Addition of Material (Article 32 of the LPI)
According to Art. 32 of the LPI, the applicant may make changes up until the examination request, as long as these are limited to the matter initially disclosed in the application, to better clarify or define the patent application.
In other words, it is possible to make Voluntary Amendments until the payment of the Technical Examination, since, after said payment, the amendments will only be accepted in order to comply with requirements or to reduce the scope of protection. After April 1, 2024, amendments in the second instance will no longer be accepted. It is important to remember that, sometimes, the removal of an element (for example, a chemical compound) from a claim can increase the scope of protection, so it is important to study all the desired amendments before collecting the examination.
The aforementioned article also restricts the scope of changes in Brazil, since they must be limited to the subject matter initially disclosed in the application. The addition of data, parameters or characteristics of the invention that were not present in the original application is considered an addition of subject matter in Brazil, thus, inserting information in the descriptive report or in the claims table is a task that requires great care, professionalism and attention, in order to not violate Brazilian legislation.
For example, adding an ingredient or specifying an essential material in a patent after its original filing is considered an addition of subject matter and is not accepted. However, if the amendment is contained in the specification, the change will be accepted after the examination date.
Finally, in relation to colored figures, they are only accepted when they are the only possible way of graphically representing the requested objective. If they do not have quality, unfortunately there will be no requirement to resubmit them, as there would be a risk of adding material. Therefore, the drawings must be carefully reviewed before filing the application in Brazil.
Nullity
A patent granted in violation of the law will be considered null and void, and the nullity may affect only some claims if the remaining claims are patentable in themselves. The nullity has retroactive effect to the date of filing of the application. Furthermore, if the applicant for a patent does not have standing to apply for it, the inventor may claim the award of the patent in court.
A patent will be declared null and void administratively if it does not comply with the legal requirements, if the report and claims do not comply with articles 24 and 25 of the LPI, if the subject matter of the patent goes beyond the content of the original application, or if any essential formality is lacking. The nullity process may be initiated ex officio or by any interested party up to 6 months after the granting of the patent and the administrative process will continue even if the patent is extinguished. The holder will be notified to respond within 60 days, and the INPI will issue an opinion after this period, with the possibility of an additional response. Regardless of whether or not there is a response, the process will be decided by the President of the INPI, closing the administrative instance; however, the matter may still be discussed in court.
A patent nullity action may be initiated at any time during the patent’s term, either by the INPI or by any interested party. Nullity may also be alleged at any time as a defense in legal proceedings. The judge may suspend the effects of the patent if specific procedural requirements are met. The action must be filed in Federal Court, since the INPI is a federal agency (Art. 45 of the Brazilian Code of Civil Procedure, Law 13,105/2015). The defendant will have 60 days to respond after being summoned, and, after the final decision, the INPI will publish a note to inform third parties.
Expiry and exploitation of patent
Within 3 years after the patent is granted, the holder must begin to exploit or commercialize the product in Brazil. Otherwise, in order to maintain his rights, he will need to grant an exploitation license to any interested party (compulsory license). If the patent is not exploited and there is no justification for disuse after 2 years of the first compulsory license, the patent may be extinguished by expiration.
As with nullity, the INPI may proceed with the forfeiture process upon request, even if the applicant withdraws. However, the effects here are not retroactive, therefore, the decision on forfeiture will take effect from the date of its request or its official filing. The patent holder is summoned to respond within 60 (sixty) days, presenting evidence regarding the exploitation of the invention.
Patent Cooperation Treaty (PCT) – Brazilian Particularities
INPI has been working on strategies to reduce the time taken to analyze patent applications. There was a time when the average time for granting an application was around 8 to 10 years. With the current procedures available, it is possible to substantially reduce this time.
Since the Backlog Combat Plan was implemented in 2019, acceleration programs and the establishment of preliminary requirements have helped reduce the number of backlog requests by around 98%, according to statistics updated in 2024, available on the official INPI website.
Brazil has several types of priority patent procedures, such as those related to the applicant, the status of the subject matter of the application in the country, the technology involved and international cooperation. All of them can be accessed here.
Some options promote, in addition to accelerating the method itself, greater legal certainty for interested parties, instigating innovation and dynamism in commercial relations in the country, and encourage significant advances in very important areas, such as the modalities involved in green technology and treatment of serious diseases. This stimulus impacts the science industry, especially companies that invest in health in Brazil, considered the largest health market in Latin America.
Acceleration programs, statistics and backlog
Brazil is a signatory to the Patent Cooperation Treaty, therefore, national phases of the PCT are accepted in this country. Below are the specificities of Brazil in relation to this treaty. Most patents filed in Brazil have the PCT as their entry route.
Deadline for Entry into the National Phase in Brazil:
30 months from the earliest date (earliest priority or international filing date in case of PCT without priority claim).
There is a 60% reduction in federal fee amounts when the application is filed by individuals.
Exam
The admissibility examination for Entry into the National Phase will begin only after the 30-month period from the priority date. However, the examination may be initiated before this period if there is an express declaration by the applicant, in accordance with Art. 23.2 of the PCT Treaty.
If the international publication (WO) of the application has not yet occurred, the admissibility examination for Entry into the National Phase will be postponed until publication has taken place.
PCT Reservations
It is important to highlight that Brazil has reservations regarding the treaty, which can be consulted directly on the WIPO website. We highlight the reservation regarding the reinstatement of rights and the restoration of priority rights (Rule 49 ter.1 (g) and 49ter.2 (h) of the PCT Implementing Regulations).
Restoration of rights to enter the national phase of the PCT (rule 49.6 – PCT)
It is very important to remember that, even if WIPO has granted the reinstatement of priority rights, they are not automatically granted in Brazil, that is, even if the restoration of priority has been accepted by WIPO (example: PCT filing with priority claim on a date after 12 months), INPI-BR is not obliged to accept it.
Therefore, a request for reinstatement of rights in the country must be requested at the time of the protocol, subject to payment of an additional federal fee in the amount of BRL 90 (approximately USD 18).
ADMINISTRATIVE DECREE/INPI/Nº 39, of August 23, 2021, describes in its Art. 22 that, when the 30 (thirty)-month term is not observed, according to Rule 49.6 of the PCT Implementing Regulation, the applicant may request the reinstatement of the right to Enter the National Phase in Brazil (with payment of the additional fee mentioned above) together with the documentation proving that the lack of execution of the acts was involuntary or that it occurred despite the precautions required by the circumstances having been taken. The term for such request is 2 (two) months, counted from the date of cessation of the reason that prevented the observance of the term or 12 (twelve) months, counted from the date of expiration of the term provided for in the aforementioned articles of the PCT Treaty, whichever expires first, and failure to observe these terms implies the withdrawal of the international application, according to Art. 24.1 (iii) of the PCT Treaty.
In OPINION/INPI/PROC/DICONS/Nº 43/2003, in NOTE/INPI/PROC/DICONS/Nº 500/2004 and in NOTE/INPI/PROC/DICONS/Nº 530/2004, INPI-BR describes that the allegation of lack of communication between the parties does not constitute a plausible reason for reestablishment of rights, since such failure is considered as a “failure of internal control by the applicant”.
Voluntary License
The holder or applicant of a patent has the possibility of entering into a license agreement for its exploitation and the licensee may receive full powers from the holder to defend the patent. For the agreement to be effective before third parties, it must be registered with the INPI; however, to prove the validity of the use of the patent, Brazil does not require that the agreement be registered.
Any improvements made to the licensed patent belong to the person responsible for the innovation, but the other contracting party has the right of preference for its licensing.
Compulsory License
The granting of a compulsory license for patents may occur in several situations, such as when the holder abusively exercises the patent rights or does not exploit the subject matter of the patent in the country. To request this type of license, the applicant must demonstrate legitimate interest and technical and economic capacity for the efficient exploitation of the subject matter of the patent, with priority for the domestic market. The compulsory license will not be granted if the holder justifies legitimate reasons for non-use or demonstrates serious preparations for exploitation.
In cases of national or international emergency, the license may be granted ex officio, temporarily and on a non-exclusive basis, provided that the holder or licensee does not meet these needs. This type of license will always be non-exclusive and will not allow sublicensing. The remuneration of the patent holder will be defined based on the economic value of the license and other relevant factors, and the granting process will include specific deadlines and requirements to ensure adequacy to the circumstances.
Change of name/company name and address
To change the name, corporate name or address of a patent application or registration in Brazil, it is necessary to submit to INPI-BR documents that prove the change, including personal documents or the company’s articles of association (or extract from the commercial registry, registration license, etc.), as applicable. In addition, a power of attorney stating the new data of the applicant/owner, if the change is made through an attorney. The federal fee is BRL 7 (approximately USD 1.4) per process or registration.
The combination of Company Name and Address is essential for the identification of foreign applicants before the INPI. If there are discrepancies between the name or address of the applicant, or if the document proving the change describes only one of these elements (or only the company name or only the address), it is possible to expect demands.
It is important to note that, if the documents are foreign, they must be notarized, legalized (at the consulate or apostilled), and translated by a sworn translator, if they are not in Portuguese.
Transfer of ownership
The patent can be transferred to another person, whether natural or legal. The transfer can occur for several reasons, such as assignment (gratuitous or onerous), merger, spin-off, letter of sale, testamentary succession or court decision. The federal fee is BRL 90 (approximately USD 18) per process or registration.
In the case of assignment (most common), an assignment document signed by the parties must be presented and there is no need for witness signatures. In transfers by court order (e.g. adjudication), the request is made by the Judiciary, based on the court proceedings.
Foreign documents must be notarized, legalized (at the consulate or apostilled), and translated by a sworn translator if they are not in Portuguese. If there is a local attorney, it is also necessary to present a power of attorney with the holder’s updated data.
Important: INPI-BR does not record the contribution percentages of each co-owner. The Institute only makes a note of the transfer, without specifying the exact division of rights or the percentage of participation of each one in the process/registration.
Change of Attorney
According to Article 217 of the LPI, an individual or legal entity domiciled abroad must appoint a local representative, under penalty of filing the application or termination of the registration.
To change the attorney, it is necessary to present a power of attorney with powers for administrative and judicial representation of the depositor, including to receive summons. The federal fee is BRL 90 (approximately USD 18).
It is not necessary to notarize or legalize the power of attorney; a scanned copy is sufficient. It is important to remember that INPI-BR only accepts digital signatures from accredited Certifying Authorities; therefore, not all digital signatures are valid.
Tips for preparing reports and claims according to Brazilian standards
The LPI, Normative Instructions 30/2013 and 31/2013 and the Patent Examination Guidelines establish general rules to explain and comply with the provisions of the LPI regarding patent specifications. We have separated some tips for preparing patents and changes to the claim framework in Brazil.
The preparation of claims must follow specific rules. INPI-BR recommends starting with the title of the invention, followed by a preamble describing the essential characteristics of the claimed subject matter, already known in the state of the art. Then, a single expression “characterized by” must be used to introduce the technical characteristics that one wishes to protect. It is possible to have claims in one or more categories as long as they are connected by the same inventive concept, for example, process and product.
As a general rule, INPI-BR does not accept claims that describe the invention only by the desired result, especially when these claims are limited to addressing only the technical problem. The abstract of the patent application must contain fifty to two hundred words, and a maximum of 25 lines.
Regarding terminology, pay attention to the prohibition of using relative terms such as “large”, “wide”, “strong”, among others, in claims, except for exceptions established in the art. Some examples of vague words and expressions are “about”, “substantially”, “approximately”, among others, which are also not permitted in the claims, whether or not they are considered relevant to the invention. Be careful and attentive when using expressions such as “preferably”, “for example”, “such as”, “more particularly” so as not to create an ambiguous meaning, since they do not have a limiting effect on the claims and are understood as optional.
Another extremely relevant factor for the INPI is the use of expressions such as “constitute of” and “consist of”, or even related terms, which limits the definition of the invention. On the other hand, there are other terms that leave the definition of the invention open, such as “comprise”, “contain”, “encompass” and “include”.
The use of registered trademarks in claims is, as a rule, prohibited, since there are no guarantees that the characteristics associated with a trademark or similar expression cannot undergo changes during the term of the patent.
Designs
Each component or element of the drawings must be identified by numerical references, which must be detailed both in the descriptive report and in the claims. Color photographs are accepted only if they are the only way to graphically represent the object of the application.
Sequence Listing
When the invention includes molecules (e.g. proteins, nucleotides, amino acids), their Biological Sequences must be provided in a listing. The listing must be presented in TXT or XML format, in accordance with the rules of Ordinance/INPI/PR No. 405, of 12/21/2020. The ST.25 standard was accepted in Brazil until 12/31/2021. Currently, the use of the WIPO ST.26 standard ensures that biological sequences are presented in a standardized and compatible manner, facilitating analysis, verification, and comparison between different databases, standardizing Brazilian standards with international standards.
Access to genetic heritage
Law No. 13,123 of May 20, 2015, establishes the rules for access to the National Genetic Heritage and Associated Traditional Knowledge in Brazil. The law requires that any access to these resources be previously authorized by the Genetic Heritage Management Council (CGEN) and registered in the Genetic Heritage and Associated Traditional Knowledge Management System (SisGen). The law also makes the granting of intellectual property rights over inventions derived from these resources conditional on compliance with the established rules.
