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March 09, 2017
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The Brazilian Patent and Trademark Office (the Brazilian PTO) published on March 1, 2017 (Patent Office Gazette No. 2408) the Resolution # 179 related to the assignment documents for the Brazilian national phase of PCT applications, which revokes resolution # 174/2016 previously published.
The new Resolution removed the points of former Resolution # 174/2016 which were severely argued by IP practitioners and applicants in Brazil and which were excessively problematic in our view, namely:
(1) the requirement that the assignment of priority rights for PCT cases were dated prior to the international filing date;
(2) the 90-day time limit for the regularization of assignments which did not comply with the conditions established by Resolution # 174/2016.
The remaining requirements related to the assignment of priority rights were maintained. As reported in our previous Circular No 15/2016 (copy attached) the assignment of priority rights is required by Article 16 of our IP Law 9,279/96 and the Brazilian PTO is now regulating some related points.
The assignment of priority rights is applicable and required whenever the applicant of the priority application is different from the applicant initially named in the PCT application claiming its priority due to an assignment of rights.
According to the new 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; and
(ii) should be filed up to 60 days counted from the date of entry into the BR phase of the PCT application.
When more than one 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.
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 deadlines are involved).
The original version of Resolution # 179 can be downloaded here. If you need an English version of the resolution 179, please let us know.
Gustavo de Freitas Morais
gustavo@dannemann.com.br