According to the guidelines specified by the National Institute of Industrial Property of Brazil (INPI), an application for registration must include the following information in compliance with article 101 of the Intellectual Property (IP) Law:
- a request;
- a specification, if applicable;
- a claim, if applicable;
- drawings or photographs;
- the field of application of the object (Locarno Classification); and
- proof of payment of the filing fee, wherein the documents that comprise an application for registration are to be filed in the Portuguese language.
After being submitted, the application is subjected to a formal preliminary examination and, if everything is in order, will be filed; in accordance with article 102 of the IP Law, the filing date is regarded as the date of submission. An application that does not formally satisfy article 101’s requirements but does offer adequate information about the applicant, the industrial design and the creator may still be delivered to INPI in exchange for a dated receipt that specifies that the requirements must be satisfied within five days. According to article 103 of the IP Law, the application will be withdrawn if the applicant doesn’t respond to this official request. Once the requirements have been satisfied, the application’s submission date will be regarded as the filing date.
In terms of the requirements, article 104 of the IP Law states that an application for an industrial design registration must pertain to a specific object, with variations allowed as long as they are designed for the same use and maintain the same prevalent distinctive characteristic between them. Each application is also limited to a maximum of 20 variations, and the drawing must sufficiently and clearly depict the object and any variations if any. An application may be withdrawn up to 90 days from the date of filing when confidentially is desired under the conditions of IP Law’s article 106, section 1. However, the first later application will have priority if an earlier application is withdrawn without having any effect.
According to article 106 of the IP Law, once an application for an industrial design registration has been submitted and all standards of said articles 100, 101, and 104 have been followed, it will automatically be published and the registration will also be granted at the same time, at which point the appropriate certificate will be issued. In Brazil, there is no examination of an industrial design’s qualities before granting.
All objects must be shown in a way that makes all of their outside features visible. Three-dimensional (3D) objects must include at least one perspective view in addition to all orthogonal views (front, back, right side, left side, upper, and bottom).
Industrial design examination
Only the title holder may request that the novelty and originality criteria of a Brazilian registration are examined at any moment during the term of registration. While the application is still pending in Brazil, there is no examination process. However, it is important to note that if it is determined that at least one of the conditions for novelty and originality is missing, INPI will give an opinion on the merits that will serve as the foundation for the ex officio establishment of nullity procedures of the registration.
According to article 212 of the IP Law, the applicant has 60 days to file an appeal if the design application is rejected in Brazil because it violates the provisions of article 100 of the IP Law. According to Article 100, nothing that offends morality, good manners, people’s honor or reputation, the freedom of conscience, religious cults, or thoughts and sentiments deserving of respect and adoration is registerable. The necessary common or ordinary shape of an object, as well as the shape that is primarily based on technical or functional concerns, are both nonetheless prohibited from registration under Article 100.
In the assumption of formulation of official action requirements, it will be examined to see if the application complies with the necessary corrections, rejecting it in cases of non-compliance with the legal provisions provided in items II, III, or IV of article 101 and/or article 104 combined with article 106, head provision of the IP Law in situations where there is unsatisfactory fulfillment of the requirement formulated. When a requirement is contested, the Brazilian examiners must determine if the reasons made are valid or not, and they must then request either their acceptance, the creation of additional requirements, or their rejection.
Opposition procedure
The publication of the grant decision for the related registration is done in conjunction with the publication of industrial designs in the Official Gazette. Industrial designs thus do not have a pre-grant opposition procedure since the design’s intended use won’t become known to third parties until after the grant decision.
Nevertheless, the registration of an industrial design may be revoked administratively or in court in Brazil. After the grant date, an administrative revocation proceeding may be initiated within five years. However, the consequences of the registration will be stopped if the procedure is commenced within 60 days following the grant decision, pending an INPI judgment on the annulment procedure. When a petition for the administrative revocation of an industrial design registration is submitted, INPI publishes the notice of the request and gives the title holder 60 days to respond.
The procedure will be concluded by INPI after hearing any more arguments from either party, which will end the administrative instance. From this moment on, there can be no more administrative discussion. A lawsuit may be initiated at any point throughout the registration period in order to obtain the revocation of the registration before the federal courts of Brazil.
Brazilian industrial designs must be registered within six months after the earliest priority, and once registered, they are valid for 25 years as long as all annual fees are paid in full. Currently, the time between submission and the grant (and ensuing publication) of the industrial design in Brazil typically takes three months if no office actions are issued. The period may take up to six months on average if there are any official actions.
In accordance with Article 119 of the Intellectual Property Law, registration expires upon the revocation of the term of protection, upon a title holder’s waiver, without affecting the rights of third parties, upon failure to pay the quinquennial fees within the regular or extraordinary time periods, or upon a failure to comply with Article 217 of the Intellectual Property Law, which requires that a person residing outside of Brazil maintain a duly qualified attorney resident there, with the power to represent him administratively.
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