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Managing i passets

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  • 1. 1 : .. -, , . 4f·~--~ ~ ..i . ~.~.- .... . . ~. ~
  • 2. :::., Building and entorcing inteUectual property value An international guide for the boardroom 2003 Editor joff Wild (jwild@globewhirepage.coG, Managing editor Adrian Preston Cover design Fran Lane Production Language by Design Associate pubiisher Steven Evans Publisher Gavin Stewart (gstewart@globewhitepage.com) Publishing directors Tony Harriss. Nigel Page Printing & binding Garden House Press Ltd Buíldíng and enforcing intel!ectual property value An international guide for the boardroom 2003 is published by Globe White Page One Cathedral Streec London Bridge London SEl 9DE United Kingdom Tel +44 20 72340606 Fax +44 20 7234 0808 Email info@g{obewhitepage.com www.globewhitepage.com First published 2002 ISSN 1478-8462 Building aná enfoTcing inteHectual property value An international guide for the boardroom 2003 © 2002 Gobe White Page No photocopying: copyright licences do not appty DISCLAIMER This pubUcation is written as a genera( guide onty. It should not be relied upon as a substitute for specific (egal and/or other professional advice. Professional advice should a(ways be sDught Defore taking any action based on the information provided. Every effort has been made to ensure that the information in this guíde is correct at the time of publication. The publishers and authors stress that this publication does not purport to provi de investment advice, nor do they bear the responsibility for any errors or omissions contained hereín. The views expressed ín the artic1es contained in this publication are those Df the authors. Copyright in the individual chapters rests with their authors. GLOSE INHITE P.".GE
  • 3. MANAGtNG tNTElUcrUAL PROPElUY ASSETSIN BR-121Lcopyríghts deveIoped under an employment or contractual Planningrelationship wiII be owned by the hiring party unless the Effecrive management af yaur intelleetual property rightsagreement provides otherwise. reqmres special atrention aud a number of preventive and enforcement efforts. Taking the proper acriou YiUminimise theCopyright infringement has increasingly become an risks associated ,virh the enforcement of your rights andlor the:-::;porrant Íssue in BrazíI and tnere are man} dífferent possibIe Ioss of your intellectual property rights and the relatedcampaigns to combat copyright infringement. The consequential costs. Brazilian law provides intellecrnal propertyphonographic and software industries are making a great holders ,•. im me tools to safeguard and enforce their rights. reffort to reduce infrmgement by educating society about the Nevertheless, intellecrual property holders should always takeill effects of copyright infringement on the countrys affirrnative steps to entorce their rights, both preventative andeconomic developrnem. reacrive, by taking legal aetiou against alleged infringers.Stroeter. Royster & Ohno Advogados, associated with Steel Hector & Davis UP l3U1lD!NG ANO ENfORCING INTHLEcrUAL PROPERTYVALUE169
  • 4. EricaAoki - - -- ----------_._---_._----- -------_._--- ----- --------- ------- Stroeter, Royster 8. Ohno Advogados.associated with Steel Hector & DavisllP. São Paulo and Rio de Janeiro Managing intelLectual property assets in Brazil Do you have complete and accurare information on ali the IP assets o.vned by your company? Do you know how much it costs your company to maintain these and how much rhey are worth? Do you know how to rake the ma.ximum comperitive advamage from your lP assets? If you are hesitam tO answer rhese quesrions, you may be losing money. Ir is ver) unlikely that your compa..1Yhas nothing to benefit from taking measures to proreet its IP assets, even if rhe only asset is a trademark, wruch you do not consider importam or famous. Wirh the Internet, we are experiencing me era of insram farne and globalisation. To enhance and safeguard corporare comperitiveness, ir has become importam to plan your markering strategy, which shouId include protection and mana gemem of your imellectual property rights, not oruy in your ovm territory, but in territories where your product or servÍce may have some commercial impact. Takíng pre."entive measures will allmv your company to reduce the risks and costs associared with lirigation relared to infringement of inrelleetual property rights, either by being accused of infringement or by having your righrs infringed. Ir is unquestionable thar Brazil, due to its size and rhe potemial of irs market, should not be excluded from }"our rarget territory list. However, despite the fact thar Brazil ma} represem a tremendous business opportuniry for your company, the failure to undersrand or learn abour rhe counrrys imellectual property system may delay your decision to spend time and rake the effort to protecr your imellecmal property rights in Brazil. ln order to help you Vith the managemenr of your inreilectuaI property rights in Brazil, ye have prepared this memo, which ma} provide fOU wirh some guidance on the dos and donts Vith }lour inrelleetuaI propeIt} righrs in Brazil. © Stroeter. Royster & Ohno Advogados.associated with Managing intellecrual property rights is nor an easy task, even if fOU have some Steel Heetor & Davis LLP2002 knmvledge of rhe relevant intellecrual property Iaws and regulations of your own166 BUllD1NG AND ENFORC1NG lNTEllECTUAL PROPERTI VALUE
  • 5. lvlANAG1NG lNTELLECTUAL PROP"ERTY ASSHS IN BRAZILjurisdiction. Your headache may increase if you have to proposed trademark is necessary to avoid the costsmanage your intellectual property rights througb different associated with applying for a non-registrable trademark injurisdictions and submit to different regulations and laws. the case of the priority of a third party. If you do conduct an internet search, you should keep in mind that the INPIsThe importance of protection data base is updated with a time lag of at least 15 days to aAs is the case with other property rights, to secure month. Thus, the results of the search may or may notintellectual property rights, the interested party must take include newly filed applications.some affirmative action, in which case a completeunderstanding af the necessary measures to guarantee After filing me trademark registration application, it is veryproperty rights is essential. AIso, as with other property importam to continuously check for any trademarkrights, preventive measures to safeguard your interesrs wiU registration applications filed by third parties that may causesave you a lot af time and money in the long termo association or çonfusion with your trademark, whether registered or still in the application processo Filing anFirst, you should recognise that, despite the fact that the opposition or nullity request with respect to any trademarkBrazilian legal system is often criticised and described as not application or registration during the administrativebeing fully prepared to protect intellecrual property rights, the proceeding term against a third party application ornew laws governing intelleetual property in Brazil provide al1 registration tbat may increase the likelibood of confusion orof the necessary tools to safeguard and/or guarantee the associarion with your trademark may reduce cost and time,proper protection of intellectual property rights held in the when compared to filing a judicial action with respect to thecounrry. Recent changes to laws mean that Brazil has now same matter.fulfilled the majority of its obligations under TRIPs. To secure an interest over the applied for or registeredThe rules for the protection of trademarks, patents and trademark, you must initiate the use of the objectcopyrights in Brazil are in compliance with the mIes of of such trademark no later than five years after theinternational convenrions such as the Paris Convention, Bern relevant registration date. The required proof of useConvention and TRIPS. The registration procedure may may be satisfied by any commercial ar financial document ordiffer in terms of detail and some minor aspects may also by a licence agreement. The trademark must be usedslightly differ from what you may be accustomed to in your in the exact form anel/or manner as specified in thehome country. relevam application ar registration and must be used strictly with respect to the product or service related to theTrademarks class of such registration or application. Where a trademarkAs Brazil has a first to file system, you must be the first to holder fails to make use of the trademark in commerce infile the relevam registration application, otberwise you may Brazil for more than five consecutive years, the registrationloose your rigbts to a trademark on account of a difference may be cancelled.of just a few seconds from a third party that has previouslyápplied for registration of the same trademark. If the trademark owner is not a resident of Brazil, it musr appoint a legal representative to represem it before the INPI.It is highly recommended that you check on the viability of The failure to appoint a represemative may cause thehaving the application approved for regisrration before you cancellation of the trademark registration. Ir is verybegin the processo The Brazilian Patem and Trademark importam to keep the INPIs data base updated on the nameOffices (INPI) data base may now be searched via the of and currem information on the appointed representa tiveinternet (http://www.inpi.gov.br). Although the proper who ",riUbe responsible for receiving aoy notification relatedevaluation of the registrability of a proposed trademark to the rrademark. Furthermore, for the maintenance of therequires some technical knowledge, you may nevertheless trademark registration, it is also necessary to inform thereceive some comfort by condueting a prior search 00 the INPI about any changes in your corporate name, principieinternet. The proper evaluation of the registrability of the place of business and/or any assignment made.Stroeter. Royster & OhnoAdvogados. assodated with Steel Hector & Davis LLP BUILDING ANO ENFORCING lNTELLECTUAL PROPERTY VALUE I 67
  • 6. MiJ.JAGING INTEllfCTUAl PROPERTI ASSETS IN BRAZIL Alrhough it is nor a legal requirement, ir is advisable to agreement. The technology transfer agreernent rnust also be maintain only one represemative for ali of your trademark registered with the INPI and is also subjeet to cerrain specific registrarions and/or applications. Maintaining multiple treannent as to rernittance and for pllrposes of deductibility representatives for trademark registrations may make ir of raralty payments. more difficult to control ali of the trademark registration proceedings of yonr company. However, considering the Copyright conflict of interest issue, in practice, ir is very difficult As me Brazilian legal s}stem adopts the sarne rationale as the to keep onl) one legal representarive for )our emire French system, copyright is considered the persanal right af trademark portfolio. Therefore, it is ver) importam the anthor who wil! always keep the moral rights over rhe that )ou reguest your legal represemative to check on the work created by him/her. existence of any canflicts of imeresr berween your rrademark and other trademarks handled by himJher and confirm the As copyrights are considered to be personal rights, the law absence rhereof. does not aIlow corporate entities to be the author of any work protected under a copyright. The corparate entity may Apart from the managemem of the trademark, it is also very have patrimonial rights to use, distribllte, transmit and/or important to check on rhe use of any trade names and cammerciaIly explore the work protected under copyright, domain names mat could harm four interests. however such rights wiU be limited to the extent expressly provided for in an assignmem agreemem. The new capyright Patents Iaw in Brazil has intentionaIly excluded the wark made for Vith regard to your patem rights, )ou must also take alI hire pravision, which was provided for under former necessar) steps to file a patem application in Brazil prior to legislation. This inrenrional excIusion was effected ta force any use af rhe parem in an) part af rhe warld ar at leasr parties to negotiate the use of and safeguard against the during the priority term to satisfy the nove!ty requirement. abusive appropriation of copyrighted work. To mainrain a parem registrarion in Brazil, it is importam to Copyright over a certain work is protected as of the creation effect rimely paymenr of the reqnired annual fees and to of such work and no specific registration is required. appoint a representative in cases where the patent is However, the registration of copyrighted works may serve as registered in the name of a nan-residem. proof of the date of authorship of the relevam wark. Although registration is not indisputabJe proof of li you do not have a registered parem in Brazil, yau may not authorship, it wil! place rhe burden of proof of authorship ai be able to license the patem and/or receive royalties for the such work on third parties claiming authorship. licence since your patem will be treated as non-patented technology in Brazil and thus in the pllblic domain. Becallse a carporate entity wiU not be recognised as rhe author af any copyrightable wark created in Brazil, it A patem infringement action requires a very careful technical is very importam to have a praper agreement regarding analysis. Since patem attorneys in Brazil do not necessarily the rights over such works with any employees hired in have rhe required rechnical background, attorneys usualIy Brazil so as to minimise the risk of copyright infringement render opinions on such matrers with the assistance of, and of an employees rights. Companies must take affirmative based an, the technical expertise of an engineer. steps to cover this issue, which is critical for companies whose most importam asset is the copyrighted material If you curremly have or use non-patemed ar non-paremable created by employees. technology which vou wallld like to rransfer to it Brazilian emity, you may want to consider the formal This rule is nor applicable to saftware, despite the transfer of such through a technology transfer agreement. fact that software is considered to be copyrighrable This wiII alIow the recipienr to make use of sucb rechnology subject matter under Brazilian law. Software is governed during and after rhe terminarion of rhe term of rhe in a specific law, which clearly provides that software168 BUILOING ANO ENFORCING INTHLECTUAL PROPERTI VALUE Stroeter, Royster & Ohno Advogados. associated with Steel Heàor & Davis lLP