Reservations to PCT
It is important to note that Brazil has reservations regarding the treaty, which can be consulted directly on the WIPO website. We highlight the reservation regarding the reestablishment of rights and the restoration of priority rights (Rule 49ter.1 point (g) and 49ter.2 point (h) of the PCT Implementing Regulation). It is important to mention that, even if the priority restoration has been accepted by WIPO (example: PCT deposit at a date later than 12 months), BPTO has no obligation to accept it.
ORDINANCE/INPI/No. 39, of August 23, 2021 describes in its Art. 22 that, when the period of 30 (thirty) months is not observed, according to Rule 49.6 of Reg. PCT Exec., the applicant may request the reestablishment of the right to the Entry of the National Phase in Brazil (payment of an additional fee) along 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 deadline for such request is 2 (two) months, counted from the date of ceasing of the reason that prevented compliance with the deadline or 12 (twelve) months, counted from the date of expiration of the deadline provided for in the said Articles of the PCT Treaty, whichever expires first.
It is important to remember that in the OPINION/INPI/PROC/DICONS/Nº 43/2003, in the NOTE/INPI/PROC/DICONS/Nº 500/2004 and in the NOTE/INPI/PROC/DICONS/Nº 530/2004, the INPI-BR describes that the allegation of lack of communication between the parties does not constitute a plausible reason for the reestablishment of rights, since such failure is considered as “failure of internal control of the applicant”.
Deadlines
The deadline for entry of the national phase of Brazil is 30 (thirty) months counted from the date of priority (earliest date), extensions of this deadline are not allowed. There is a 60% reduction in federal fee amounts when the application is filed by individuals.
It is possible to submit late within 60 (sixty) days the complete translation of the application in Portuguese, the power of attorney and the assignment document, however, the INPI-BR requires that it be presented, at least the translation of the set of claims or the description at the time of filing, otherwise the application will be considered withdrawn in relation to Brazil, regardless of notification or office action.
Documents
At the time of the filing, it is necessary to present a certified copy of the priority, translation of the application into Portuguese and a power of attorney (notarization/legalization not required). Brazilian PTO accepts the DAS (Digital Access Service) code from the WIPO digital library instead of the priority copy.
If the priority is obtained by assignment or if the applicant is changed after the PCT protocol date and the change has not yet been officially notified by the International Office (PCT/IB/306), the assignment document or declaration must be presented or an equivalent document, accompanied by a simple translation (notarization/legalization not required), its lack will result in the loss of priority. The assignment document may be replaced by the statement in Table VIII (III) of Regulation 4.17 (III) of Reg. PCT Exec., confirming the assignment by all priority holders. Also, it is important to note that the assignment document of the international application must have been signed before the Entry into the National Phase, otherwise, the assignment in Brazil must be requested respecting the local documents and fees.
If the priority is obtained by assignment or if the applicant is changed after the PCT protocol date and the change has not yet been officially notified by the International Office (PCT/IB/306), the assignment document or declaration must be presented or an equivalent document, accompanied by a simple translation (notarization/legalization not required), its lack will result in the loss of priority. The assignment document may be replaced by the statement in Table VIII (III) of Regulation 4.17 (III) of Reg. PCT Exec., confirming the assignment by all priority holders. Also, it is important to note that the assignment document of the international application must have been signed before the Entry into the National Phase, otherwise, the assignment in Brazil must be requested respecting the local documents and fees.
Regarding the nucleotide and amino acid sequence listing, according to ORDINANCE/INPI/PR No. 48 of June 20th, 2022, the national phases of PCT must follow the format submitted in the international application (ST.25 or ST.26), on the other hand, applications that enter the country directly as of July 1st, 2022, claiming or not priority, must be submitted in the standard ST.26. The Brazilian PTO also confirms that it will not issue office actions for grammatical correction regarding special characters not accepted by the WIPO sequence program, such as “^”, “~” and “ç”.
Representative
First, if the applicant does not have a domicile in Brazil, it is important to appoint a representative. Such request is provided for in Art. 217 of the Industrial Property Law, and its non-compliance is cause for extinction of rights. It is worth noting that the power of attorney must contain special powers to receive judicial summons if the depositor is domiciled abroad.
Although regulation of the IP Agent’s profession in Brazil is defended by several magistrate professionals, by the BPTO itself and by associations, such as ABAPI (in portuguese, Brazilian Association of Industrial Property Agents) and ABPI (in portuguese, Brazilian Association of Intellectual Property), after a judgment rendered in a Public Civil Action (Resolution No. 141/2014 published on 11/11/2014), the BPTO no longer makes examinations and registrations of Industrial Property Agents (API), so not only lawyers or IP agents, but any natural person or company with an address in the country and capacity can act as an representative before the Institute.
Want to know more about the national phase of PCT in Brazil? Contact us at info@cnvbrazil.com.br or phone +55 (17) 2136-8829.
