by - -
December 26, 2016
Share
The Brazilian Patent and Trademark Office published on December 6, 2016 (Patent Office Gazette No. 2396), a new resolution related to the assignment documents for the national phase of PCT applications.
An assignment of priority rights is required by Article 16 of our IP law 9279/96 and the Patent Office is now regulating some related points. The assignment of priority rights is applicable and required whenever the applicant of the priority application is different to the applicant initially named in the PCT application claiming its priority due to an assignment of rights. According to the regulation, the assignment of priority rights:
(i) can be replaced by the declaration submitted when filing the PCT application (See Box VIII – (iii) of from PCT/RO/101) under rule 4.17 and rule 51 bis 1 to (iii) of the PCT;
(ii) should contain data identifying the priority application as well as data related to the Assignor and the Assignee;
(iii) should be filed up to 60 days counted from the date of entry into the BR phase of the PCT application;
(iv) should be executed prior to the international filing date of the PCT application.
According to the discussions with Director of the PCT section of the Brazilian PTO, all assignments of priority rights when dated after the international filing date of the PCT application and which do not contain a clause ratifying previous acts taken by the Assignee are considered to be irregular. A period of 90 days counted from the notification of this resolution is granted to regularize the document/application. This procedure is applicable to any National phase application where the notification publishing the national phase entry (Code 1.3) has not occurred yet. Our form of assignment of priority rights contains such a clause but we intend to double check the cases filed by us.
When more than 1 priority claim is involved, the assignment should cover the priority rights of all priorities being claimed. For instance, an assignment covering the priority rights of both a Provisional and a non-Provisional application when both priorities are claimed in the PCT application.
A PCT Assignment is applicable whenever the Applicant initially named in the PCT application is different from the Applicant named in the entry into the BR phase due to an assignment of rights. It is highly advisable that the corresponding change of applicant be submitted during the international phase and that the confirmation form IB/306 be submitted to the Brazilian Patent office to avoid any objection. If no change is requested during the international phase and if it is not possible to submit the corresponding PCT assignment at the time of entry into the BR phase, our advice is to file the national phase in the name of the applicant initially named in the PCT and then to request recordal of the assignment when it becomes available (in which case no fatal time limits are involved).
If you need an English version of the resolution 174, please let us know.