Patents

Legal framework

In Brazil, the patent system is based on Article 5 (XXIX) of the Brazilian Constitution, which establishes the basis for granting temporary privileges and protecting inventions. Patents are recognized as temporary privileges granted to inventors to protect their inventions, promote social interest, and foster the nation’s technological and economic development.

Brazil’s patent system is primarily governed by Federal Law No. 9,279/1996, which was enacted on May 14, 1996, and is colloquially known as the Intellectual Property Law, or IP Law. This legislative milestone was not developed in isolation, but rather as a response to broader international imperatives. Its origins can be traced back to the Brazilian Congress’s ratification of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), a watershed moment that confirmed Brazil’s commitment to aligning its IP regime with global standards. The incorporation of TRIPS into the Brazilian legal framework was formalized through Decree No. 1,355 on December 30, 1994. This comprehensive legislation establishes the procedures, requirements, and protections for patents in the country.

Brazil’s membership in several key WIPO-administered treaties has a significant impact on IP practices within its borders. These treaties include:

• Paris Convention for the Protection of Intellectual Property (“Paris Convention”);
• Patent Cooperation Treaty (PCT); and
• TRIPS.

Types of patents and duration

Brazil recognizes two primary types of patents. One of these is the invention patent, which protects creations that result from the use of creative ingenuity, provide innovative solutions to technical problems within specific technological domains, and can be manufactured. Patentable inventions include both industrial products (compounds, compositions, objects, apparatus, and devices) and industrial activities (processes and methods). In order to qualify for patent protection, an invention must meet three fundamental requirements at the same time: (i) novelty; (ii) inventive step; and (iii) industrial application, as stated in Article 8 of the IP Law. Invention patents protect technical creations to achieve specific technical outcomes.

This type of patent has a 20-year term of protection from the filing date, granting inventors the exclusive right to commercially exploit their inventions during this period.

Furthermore, under the IP Law, the applicant or holder of an invention patent may request a certificate of addition to protect improvements or developments introduced into the original invention. This provision is described in Article 76 of the IP Law. Unlike the main invention patent, a certificate of addition does not require the same level of inventive step; it is granted if the subject matter falls within the scope of the original inventive concept. The certificate of addition serves as an accessory to the main patent. However, it is important to note that an application for a certificate of addition will be denied if the subject matter does not correspond to the same inventive concept as the original patent, as stated in Article 76(3) of the IP Law.

According to Article 77 of the IP Law, the certificate of addition is an accessory to the main patent, sharing its expiration date and following it for all legal purposes. In cases of nullity proceedings, the holder of the main patent has the right to request that the matter contained in the certificate of addition is examined to determine its viability, without affecting the term of protection of the main patent, as outlined in Article 77(1) of the IP Law. 

The second type of patent in Brazil is for objects of practical utility, or parts thereof, that fall under the category of utility models as defined in Article 9 of the IP Law. In order to be considered a utility model, the object must meet certain requirements: (i) be susceptible to industrial application; (ii) exhibit a novel form or arrangement; and (iii) involve an inventive step that results in a functional improvement in the object’s use or manufacture. 

Utility models typically include three-dimensional objects, such as instruments, utensils, and tools, that are intended to serve practical purposes. Unlike invention patents, utility models have a shorter term of protection, lasting 15 years from the filing date. Despite their shorter duration, utility models still grant inventors exclusive rights to commercially exploit their inventions. This provision ensures that inventors are incentivized to innovate and improve practical objects, thereby advancing technology and industry.

It is possible to transition between patent types, such as from an invention patent to a utility model during prosecution. 

Application

Patent applications are filed by submitting a detailed description of the invention or utility model, as well as relevant drawings and specifications to the BRPTO. After filing, the application is examined to ensure compliance with legal requirements such as novelty, inventive step, and industrial applicability. 

In Brazil, patent applications and certificates of addition must clearly and sufficiently describe the subject matter so that a person skilled in the art can carry it out, as outlined in Article 24 of the IP Law. This entails providing all necessary information for replication by a skilled person in the relevant field, including the best method of execution when applicable. Specifications should address existing issues, propose solutions, and identify the target technical sector. They must also emphasize novelty, technical effects (invention cases), and benefits over existing solutions. Utility model specifications also emphasize improved conditions due to new shapes or layouts. 

Claims 

According to Article 41 of the IP Law, the wording of claims is extremely important in the drafting of patent applications because it shapes the scope of protection granted by a patent. Claims define and limit the scope of patent protection, as interpreted in conjunction with specifications and drawings.

Claims are divided into independent and dependent. Independent claims emphasize essential and specific technical characteristics of the invention or utility model, preserving unity while serving as the foundation for dependent claims. Dependent claims elaborate on previous claims by specifying details or additional features.

In invention patent applications, essential technical features are defined after the expression “characterized by”, which incorporates aspects from the preamble. Multiple independent claims may be included, divided into different categories (e.g., product and process), and linked by the same inventive concept. For instance, expressions such as “apparatus for carrying out the process defined in claim x” show their interconnectedness.

Non-patentable subject matter

The IP Law establishes a dual standard for what is considered unpatentable within its scope. This approach has two major components: a) subject matter lacking inventiveness that is ineligible for patent protection; and b) inventive subject matter expressly excluded from the scope of Law No. 9,279 for public policy or other legal reasons. Article 10 of the IP Law expressly excludes certain categories from being considered inventions due to their inherent lack of inventiveness, making them unpatentable:

Article 10 — the following are not considered to be inventions or utility models: 

1. discoveries, scientific theories and mathematical methods;
2. purely abstract concepts;
3. schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature;
4. literary, architectural, artistic and scientific works or any aesthetic creation;
5. computer programs per se;
6. the presentation of information;
7. rules of games;
8. operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body; and
9. natural living beings, in whole or in part, and biological material, including the genome or germ plasm of any natural living being, when found in nature or isolated therefrom, and natural biological processes.

Article 18 of the IP Law expressly prohibits certain categories from being patentable, regardless of their potential inventiveness. These prohibited subject matters cannot be patented under any conditions.

Article 18 — the following are not patentable:

1. that which is contrary to morals, good customs and public security, order and health;
2. substances, matter, mixtures, elements or products of any kind, as well as the modification of their physical-chemical properties and the respective processes of obtaining or modifying them, when they result from the transformation of the atomic nucleus; and
3. living beings, in whole or in part, except transgenic microorganisms meeting the three patentability requirements — novelty, inventive step and industrial application — provided for in Article 8 and which are not mere discoveries.

Sole Paragraph — For the purposes of this law, transgenic microorganisms are organisms, except the whole or part of plants or animals, that exhibit, due to direct human intervention in their genetic composition, a characteristic that cannot normally be attained by the species under natural conditions.

Patent filing procedure and prosecution

The patent filing process in Brazil is structured similarly to procedures in other prominent jurisdictions. Applicants can file patents directly with the BRPTO or through the PCT’s National Phase. 

Notwithstanding the above, patent applicants in Brazil should be aware of the following key prosecution aspects.

Article 32 of the IP Law allows amendments to patent applications until the date to request examination, subject to certain conditions. Amendments must be limited to the initially disclosed subject matter and may not change the scope of protection sought. Resolution 93/2013 clarified the examination guidelines under Article 32. According to the BRPTO, post-examination amendments requests, whether voluntary or in response to an office action, are acceptable if they only narrow the subject matter without altering the claimed object. However, any amendments that broaden the scope of protection result in the rejection of the entire set of claims, ensuring consistency and integrity in the patent examination procedure.

Voluntary claim amendments in divisional applications are permitted only if the application was filed before the request for examination of the parent application, as stated in Articles 26 and 32 of the IP Law. During the examination of a divisional application, only claims submitted up to the parent application’s examination request are considered. Amendments that introduce new claim categories or broaden the scope of protection of the original claims are not allowed if the divisional application is filed after the request for examination of the parent application. 

Enforcement

The IP Law defines patent holders’ rights to enforce their patents against infringers, departing from previous law, which presumed enforcement rights from criminal provisions. According to Article 42, patent owners have the right to prevent third parties from producing, using, offering for sale, selling, or importing patented products or processes. 

The parties contributing to infringement face liability, while the alleged infringer bears the burden of proving non-infringement of process patents. Article 43 defines exemptions from infringement allegations, which include acts for private use, experimental purposes, and medical preparation, among others. However, these exemptions lack interpretive authority and judicial application in Brazil, which could lead to ambiguities for patent holders. 

Article 44 ensures that patent holders are compensated for unauthorized use, as measured by actual loss, unjust enrichment, or imputed license fees. Compensation may be granted from the filing date of the application, or earlier if the infringer used the invention with prior knowledge. The starting date of the infringement compensation is determined by the priority dates of the patents filed under National Phase procedures in Brazil. 

Licensing

Patent holders in Brazil have the option of licensing their patented inventions or utility models to third parties, allowing them to commercialize the technology while maintaining ownership rights. Licensing agreements typically specify the terms and conditions of use, such as royalties, duration, and territorial restrictions. In order to avoid potential legal challenges, licensing agreements must comply with competition law and antitrust regulations.

Articles 64–66 of the IP Law allow licensors to seek assistance from the BRPTO in publishing and promoting patent licenses for commercial exploitation by the general public. This provision seeks to eliminate or mitigate the possibility of compulsory licensing. Furthermore, these articles establish an arbitration mechanism through which the BRPTO can resolve disputes regarding the level of compensation to be received by the licensor, at the request of the parties involved. In order to incentivize licensors to use BRPTO’s licensing services, participating licensors receive a 50% reduction in patent annuity fees for patents covered by BRPTO-promoted licenses.

Industrial Designs

Legal framework

The legal framework for industrial designs in Brazil is primarily governed by IP Law No. 9,279/1996. Brazil has also signed international treaties and agreements governing industrial design protection, including the Paris Convention and TRIPS.

Since late 2023, the BRPTO has implemented new procedures for industrial designs. These updates seek to broaden the scope of industrial design protection, formalize rules by the Hague Agreement, and streamline the registration process. 

Definition and duration

An industrial design protects an object’s external ornamental shape or design pattern, which distinguishes it from others. This protection does not cover functionality, practical advantages, materials, or manufacturing forms. The IP Law allows the registration of up to 20 objects in a single application if they are variations of the same object that share dominant characteristics while retaining the visual identity. Industrial designs can be three-dimensional, representing the physical shape of a manufactured item, or two-dimensional, denoting the arrangement of lines and colors applicable to a product.

The protection is valid for 10 years from the filing date and can be extended for three consecutive five-year periods (for a total of 25 years of protection). The holder of a registration is required to pay a quinquennial fee as from the second quinquennium following the filing date. The payment of the second quinquennium shall be made during the fifth year of the registration period. Likewise, the payment of the following quinquennial fees shall be made together with the renewal application as stated in Article 108 of the IP Law. 

Registration

Industrial designs must be (i) novel; and (ii) original, with both ornamental and external configuration. An industrial design may be granted without analyzing these requirements by the BRPTO. This may occur because the registration of industrial designs in Brazil does not require substantive examination, which is not mandatory to obtain the registration and can be requested at any time during the registration process, including after the registration is granted (for enforcement purposes).

Brazil recently joined the Hague System, resulting in a standardized application procedure for industrial designs. As a result, since late 2023, the BRPTO has implemented several new processes for industrial designs, culminating in the publication of the second version of the Industrial Designs Manual (“the Manual”) and the new electronic application system. 

This new edition of the Manual adapts the BRPTO processes to the highest international standards, providing applicants greater transparency throughout the industrial design application evaluation process. Some of the most important aspects of the second edition of the Manual include: 

• The adoption by the BRPTO of the protection of industrial designs that incorporate trademarks or logos.
• Protection of industrial designs that include textual components of any kind and in any language.
• Protection of static or dynamic graphic interfaces, iconography, and font families.
• Three-dimensional assemblies consisting of parts that have no mechanical connections to each other.
• It is established that the registration of the dynamic graphic interface is done by means of the representation of static figures in the display sequence. In other words, the figures must be displayed. In addition, the display options for the design of interest have been expanded, allowing dotted lines to indicate areas of the item that are not claimed.

Enforcement

As previously mentioned, the registration of industrial designs in Brazil does not require substantive examination. As stated in Article 111 of the IP Law, the applicant of an industrial design may request the examination of novelty and originality of the subject matter of the registration at any time during the registration period. A substantive examination by the BRPTO determines whether an industrial design is “novel” and “original” compared to the prior art. Without this analysis, it is not possible to enforce a design against possible infringement and obtain injunctive relief.

Defendants in infringement lawsuits must corroborate that the design has been examined and fulfills legal standards. Filing an invalidity lawsuit in Federal Court or a non-infringement action in State Court might be useful defensive strategies to preserve the right.

Licensing

Industrial designs may be licensed in whole or in part. The BRPTO will record licenses including information on the licensee, the limits or conditions of the design and any change in the name, headquarters or address of the licensor and/or licensee. The owner of an industrial design may enter into a licensing contract and grant the licensee complete rights to defend the design. Such a contract will only be enforceable against other parties if it is registered with the BRPTO. Any modification made to a licensed design shall remain the property of the person who invented it; nevertheless, the other contracting party shall have a preferential right to a license.

Legal framework

The trademark system in Brazil is based on Article 5 (XXIX) of the Brazilian Constitution. According to this article, the law must protect trademarks, entity names, and other distinctive signs while considering societal interests and the country’s technological and economic development. The legal framework for trademarks in Brazil is governed by IP Law No. 9,279/1996. Brazil has signed several important international treaties concerning trademarks, including: (i) the Paris Convention; (ii) TRIPS; (iii) the Nice Agreement concerning the International Classification of Goods and Services for the Registration of Trademarks; and (iv) the Protocol relating to the Madrid Agreement concerning the International Registration of Trademarks.

Types of trademarks and duration

(i) A product or service mark is a sign capable of visually distinguishing goods or services of different origins.

Trademarks can have various forms, including:

• Word mark: a collection of words, neologisms, or letters and digits.
• Figurative mark: drawings, pictures, ideograms, or designs that include stylized letters or figures as well as words in non-Latin alphabets.
• Mixed mark: combine both text and visuals.
• Three-dimensional (3D) mark: represents the shape of a product and distinguishes it from others. 
• Position mark (introduced in 2021 by the BRPTO): used to generate a unique identity for a product by placing a sign in a precise location, regardless of any technical or functional aspect. This allows differentiating the products or services from other similar or comparable ones. 

(ii) A collective mark identifies products or services manufactured by members of a certain collective body, such as an association or cooperative. Only the collective body may apply for this type of trademark registration and establish the rules of use for its members.

(iii) A certification mark indicates that products or services fulfill certain criteria established by the holder of the mark in terms of origin, manufacturing method, quality, and other characteristics. Its use is governed by established guidelines.

The term of protection of a trademark registration in Brazil is 10 years, counted from the filing date. After the initial registration period, trademark holders may renew their registrations indefinitely for successive 10-year periods. In order to renew a registration, the owner must file a renewal application with the BRPTO within six months of the registration expiry date.

Registration

The IP Law allows the registration of visible indications as trademarks, provided that they meet the following legal requirements: (i) relative novelty; (ii) authenticity; and (iii) distinctiveness. It is worth noting that non-traditional trademarks such as olfactory, auditory, and taste marks are not allowed due to the visual representation requirement. On the other hand, 3D marks, considered non-traditional, have been recognized in Brazil since 1997. Article 124 of the IP Law defines unregistrable marks as those with general, descriptive, or common qualities, as well as specific names, emblems, flags or official public distinctions unless permitted by the appropriate government.

The registration procedure starts with the filing of the trademark application. Once filed, it will be examined by the BRPTO to ensure that it meets the registrability requirements.

The examination procedure includes:

• Formal examination: BRPTO will verify that the application is complete and properly filed.
• Substantive examination: BRPTO will examine the mark to ensure that it is distinctive and not prohibited from registration.

If the BRPTO identifies any defects in the application, it will issue an official action to the applicant. The applicant will have an opportunity to correct the defects and resubmit the application.

After passing the formal examination, it is subject to a publication procedure in which interested parties have 60 days to file an opposition. If an objection is filed, the applicant must respond within the same time frame. An analysis is then carried out, taking into consideration any potential conflicts with existing trademarks. Then, a decision is issued to approve or reject the application. In case of refusal, the applicant has 60 days to file an appeal to the President of the BRPTO. 

After publication, the Office examines absolute and relative grounds for refusal.

Absolute grounds for refusal are those that make a mark inherently unregistrable. These include:

• Marks that are generic or descriptive of the goods or services.
• Marks that are primarily surnames or geographical indications.
• Marks that are confusingly similar to well-known marks.
• Marks that are contrary to public order or morality.

Relative grounds for refusal are those that prevent a mark from being registered because it conflicts with the rights of a prior trademark owner. These include:

• Marks that are identical or confusingly similar to a prior trademark for the same goods or services.
• Marks that are likely to cause association with a prior trademark for different goods or services.
• Marks that are well-known in Brazil, even if they are not registered.

In case of rejection, the applicant is granted a period of 60 days to respond. This period may be extended for another 60 days. The decision confirming the refusal may be appealed to the BRPTO within 60 days of its publication. 

If the trademark application is granted, the BRPTO will register the mark and issue a certificate of registration. As previously mentioned, the registration will be valid for 10 years from the filing date of the application.

The holder of a trademark must use it within five years of registration. Otherwise, the registration may be declared extinguished at the request of any individual with a reasonable interest. Furthermore, if the use of the mark is interrupted for more than five consecutive years, or if the mark is used in a modified form that alters its original distinctive character as indicated in the certificate of registration, the registration may be declared lapsed at the request of another party.

Finally, it is worth noting that the BRPTO has amended its trademark requirements to comply with the Madrid Protocol. In particular, it has included provisions relating to co-ownership of applications and the use of the multiclass system.

Enforcement

Enforcement of trademark rights in Brazil involves both administrative and judicial proceedings. The administrative mechanisms include opposition and administrative nullity actions.

Civil proceedings allow the injured party to file a lawsuit requesting the cessation of the infringing act and compensation for damages. Preliminary injunctions may be granted to cease the harmful conduct pending a final decision, subject to specific requirements. 

Criminal actions may be initiated through a criminal complaint, with the possibility of preliminary criminal search and seizure actions to gather evidence.

Licensing

Under Article 139 of the IP Law, trademark licenses may be granted for both registered trademarks and pending applications. There are three different types of licenses: (i) exclusive; (ii) sole; and (iii) non-exclusive. Most-favored-nation (MFN) provisions, although uncommon in Brazil, may be included in non-exclusive licenses, but must comply with competition regulations. Trademark licensing may include all or part of the goods or services stated in the registration/application, and the licensee’s use may be restricted by terms such as exclusive distribution or e-commerce prohibitions. 

On July 11, 2023, the BRPTO issued Ordinance Nos. 26/2023 and 27/2023, which introduced an important change in the payment of royalties for pending trademark applications. Previously, the BRPTO considered that trademark applications were merely an anticipation of rights and, therefore, could not benefit the applicant in obtaining royalties, despite the agreement between the parties. 

Through the aforementioned Ordinances, the BRPTO has changed its position, admitting that trademark applications have the legal status of a contingent right. This amendment allows these applications to be considered assets of their owners, enabling them to enter into regular license agreements with third parties that include provisions for the payment of royalties.

Legal framework

The primary national legal instrument for copyright in Brazil is the Brazilian Copyright Law No. 9,610/1998, which is complemented by the legislation for the protection of computer programs — Brazilian Computer Program Law No. 9,609/1998. 

Definition and duration

The Copyright Law governs the rights over literary and creative works, as well as related rights. The Computer Program Law establishes measures for the protection of IP rights relating to computer programs.

The economic rights of the author are protected for 70 yearsfrom the first day of January of the year following his death. The rights of a computer program are protected for 50 years, starting on January 1 of the year following its publication or, failing that, its development. “Moral” rights are inalienable and irrevocable, which means that they cannot be transferred, licensed, or assigned.

Registration

Copyright registration is voluntary for protection. If the work is original according to the criteria of the Copyright Law, it will be granted copyright protection regardless of registration. Depending on their nature, copyrights must be registered with various public entities, such as the National Library or the Federal University of Rio de Janeiro.

Computer programs may be registered with the BRPTO. Registration provides greater legal security for the holder in the event of a lawsuit to establish authorship or ownership of the program.

Enforcement

Copyright and software infringements are considered both civil and criminal offenses. As a result, the damaged party may use both civil and criminal proceedings to enforce its rights.

In civil proceedings, the aggrieved party may file a lawsuit to cease the infringing act and obtain damages. The suit may include a request for an ex parte injunction to enjoin the injurious activity until the merits of the case are decided. In addition, the plaintiff may seek a daily penalty for non-compliance with the injunction.

Licensing

The author’s rights may be totally or partially licensed to third parties by: (i) the author or his successors in title; (ii) a universal or individual license granted personally or through representatives with special powers of attorney; or (iii) concession, assignment, or any other means admitted by law, subject to the limitations set forth below. The author’s total license includes all rights, except moral rights, which are inalienable and irrevocable, meaning that they cannot be transferred or assigned.

In the absence of an explicit contractual stipulation, the maximum duration of the license is five years.

Licenses are only valid in the country where the contract was signed and only for the modes of exploitation existing at the date of the contract. If no mode of exploitation is mentioned, the contract shall be interpreted as being limited to the mode necessary for the purpose of the contract.

Legal framework

In Brazil, trade dress does not have a specific designated law, as it is not explicitly mentioned in IP laws such as the Intellectual Property Law (Law No. 9.279/1996). Nonetheless, it is protected by the broad rules of unfair competition and the principles of consumer protection.

Article 195 of the aforementioned Intellectual Property Law states a series of practices that are outlined as “unfair competition” that can be summarized as: 

• False Statements or Information: publishing or sharing false claims about a competitor to gain an advantage.
• Fraudulent Clientele Diversion: using deceptive methods to attract another’s clients.
• Imitation or Misuse: copying advertising expressions, commercial names, or insignia in a manner that causes confusion.
• Unauthorized Substitution: replacing another’s trademark or logo on products without consent.
• False Advertising: claiming unearned awards or distinctions.
• Adulteration and Misrepresentation: selling or offering products in misleading containers or packaging.
• Bribery: offering or accepting rewards to gain competitive advantages through employee misconduct.
• Unauthorized Use of Confidential Information: exploiting trade secrets or confidential data acquired through illicit or unauthorized means.
• Misleading Patent or Design Claims: falsely advertising a product as patented, registered, or pending approval.

In addition, Consumer Protection Code (Law No. 8.078/1990 also forbids practices that mislead or confuse consumers about the origin or identity of products or services, which can include imitation of trade dress.

As a result, trade dress is not explicitly protected as a standalone IP right. However, the individual elements thereof, e.g., logos or shapes, should be evaluated as to the possibility of filing for registration as trademarks or industrial designs.

Enforcement

Extrajudicial actions such as cease and desist letters are sometimes the first step towards effective enforcement. However, trade dress owners can also file their claims before Brazilian regulatory agencies, which have the authority to suspend licenses or impose fines for infringements in regulated sectors. 

Judicial enforcement may be used and issued decisions addressing consumer confusion caused by similar designs demonstrate that courts are becoming increasingly cognizant of trade dress issues. 

Legal framework

Despite the fact that there is no specific provision in the Brazilian legislation that recognizes the right of publicity, the Brazilian Constitution (Article 5, X and XXVIII) protects the right to privacy, image, and moral rights, ensuring that personal and proprietary aspects of one’s identity are safeguarded. Furthermore, the IP Law provides for measures to ensure the protection of elements related to the personality and image of a person, since it is possible to register a trademark for the name, nickname or image of a person subject to the consent of the latter.

Brazil recently approved the General Data Protection Law (LGPD) in 2018 (Law No. 13.709/2018), which came into force in 2020. This law provides comprehensive data protection rules, aiming to safeguard individuals’ personal data, including names, images and other personal identifiers.

Enforcement

Civil courts are used to enforce these rights. In addition, a self-regulatory organization created to oversee the advertising industry, which makes decisions on matters that concern both its members and consumers in general may be used, such as theNational Self-Regulatory Council (CONAR).

Licensing

The patrimonial rights (property or economic rights) associated with the right of publicity can be transferred or licensed under specific conditions. The transfer of patrimonial rights during an individual’s lifetime can be accomplished by licensing agreements or a complete transfer of rights, frequently with predetermined conditions as to scope, territory and installments. The patrimonial rights of the deceased may be transferred or licensed to third parties by his heirs or successors after his death.

Legal framework

The protection of trade secrets in Brazil is addressed as unfair competition, which is criminalized in the aforementioned IP Law. The TRIPS Agreement and other legal provisions, including the Federal Constitution’s clause on the inviolability of privacy, also safeguard this right.

In this regard, the IP Law, particularly Articles 195 (XI) and 195 (XII), which prohibit the unauthorized disclosure, exchange or use of trade secrets, regulate the protection of trade secrets in Brazil. These articles ensure that entities can protect the sensitive data that provides them a competitive advantage. 

“Article 195 — A crime of unfair competition is committed by whomever:

XI — discloses, exploits or uses, without authorization, confidential knowledge, information or data, usable in industry, commerce or the provision of services, with the exception of those that are in the public domain or obvious to a person skilled in the art, to which he has had access by virtue of a contractual or employment relationship, even after the termination of the contract;

XII — discloses, exploits or uses, without authorization, knowledge or information as mentioned in the previous item, when obtained directly or indirectly by illicit means or to which he has had access by fraud.”

Enforcement

If a trade secret is misused, disclosed or used without authorization, its owner may bring a civil action to recover damages. Financial restitution for any damage to an entity, its reputation or competitive advantage may fall into this category.

Courts may grant preliminary injunctions or provisional remedies to restrict further disclosure or use of the trade secret while the lawsuit is pending. This is critical to avoid prejudice while the legal proceeding is ongoing.

Licensing

By means of Ordinances 26 and 27 dated July 11, 2023, the Brazilian PTO accepted the licensing of non-patented technology, including trade secrets and know-how. This has created new opportunities for companies to safeguard and license trade secrets, resulting in more transparent and organized transactions involving confidential company know-how.

The novelty provided by these recent Ordinances is the understanding that know-how technology transfer agreements may comprise (i) the permanent acquisition, or (ii) the temporary license to use know-how not covered by IP rights or the transfer of technological information, with the goal of facilitating the production of goods and services.

The acceptance of temporary know-how license agreements and their recordation at the Brazilian PTO provides trade secret holders in Brazil with an important tool to ensure the protection and enforcement of their rights. 

This framework supports the formal licensing of non-patented technologies, including trade secrets, and provides clear legal mechanisms for resolving disputes, including claims for damages and injunctive relief in case of unauthorized use or disclosure.

See above, Section 3.

IP dispute process

The Brazilian Code of Civil Procedure (Law No. 13,105/2015) promotes resolution and mandates judges, attorneys and other interested parties to engage in Alternative Dispute Resolution (ADR) procedures. Consequently, Brazil had two preliminary initiatives: (i) the Dispute Resolution Center of the Brazilian Intellectual Property Association (CSD-ABPI), created in 2012, was an unprecedent extrajudicial mechanism for the resolution of issues related to IP; and (ii) the BRPTO created the Intellectual Property Defense Center (CEDPI) through Resolution No. 84/2013 of April 11, 2013, establishing the Mediation Rules for the resolution of disputes related to opposition to trademark registrations. Unfortunately, Decree No. 8,854/2016 eliminated the former BRPTO framework (ii).

Currently, CSD-ABPI oversees four chambers: 

• Domain Name Dispute Resolution Chamber (CASD-ND);
• Mediation Chamber (CMed-ABPI);
• Chamber of Arbitration (CArb-ABPI); and 
• Chamber for the Resolution of Digital Rights Disputes (CDD-ABPI).

A new rule of the Administrative System for Internet Disputes (SACI-ADM) entered into force on October 1, 2022, and only applies to “.br” domains registered after October 1, 2010, to resolve short-term domain disputes without judicial intervention.

CSD-ABPI and its chambers demonstrate their dedication to modernizing and streamlining dispute resolution procedures. Despite setbacks such as the closure of the BRPTO Defense Center (CEDPI), these initiatives highlight the changing environment of ADR in Brazil, with the intention of providing quick and expert resolutions outside of the traditional courts. This evolution not only aligns with worldwide best practices, but also demonstrates Brazil’s commitment to developing a more agile and accessible IP judicial system.