1. VOLUME THIRTEEN IVUMBER Two FEBRUARY 1997 $4. 9~
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EXPATRIATE SERVICES:
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SOUTH AFRICA UPDATE
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THE GREENING OF LATII
TECHNOLOGY MARKETS
BRAZIL PATENT UPDATE
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2. South America: lPR Update
Patents No Longer Pending
Brazil's new patent and intel!ectual property effective filing date. From the date of
the actual grant, the Iaw guarantees
law will take effect in May, bringing this erstwhile terms of protection for at Ieast 10
rebel Ínto harmony with world standards. and seven years, respectively.
The owner of the approved patent
will have exclusive rights, and may
by Elica Aoki prevent third parties from importing
________________ ---------------- products covered by the patent 01'
property, the washington Patent products obtained directIy by means
Iectual property Iaw Cooperation Treaty, and the Paris of the patented processo
When Brazil's newinintei-
takes full effect May, Convention on Protection of A patent cannot be renewed, and
it will at Iast bring the nation into Intellectual Pmperty_ after its term is expired, it enters into
general cOlúormity with internation- Brazil's new Industrial Property public domain.
al standards on patents, patent pro- Law will bring the country up-to- Trademark Protectiou. The Iaw
tection, trademark and trade-secret date on many common intemational introduces to Brazil a trademark
protection and technology transfer. standm .. s:
d holder's protection against any mark
In recent decades, Brazil has been Patents. Inventions and utility. that fully 01' even partially imitates
one of the most assertive nations in models are now patentabIe, aIthough 01' reproduces a domestic 01' foreign
promoting the rights of users of a the inventor must prove the inven- trademark. This aspect of the Iaw
patented product - such as medi- tion 's novelty 01' newness, indusuial gready broadens protection against
cine 01' computeI' software - as applicability and the uniqueness of piracy and dilution.
opposed to the rights of that prod- the activity that resulted in improve- The new law also expands protec-
uct's creators and producers. This ment in function 01' manufactming. tion for civil nanles, company
stauce has been wideiy criticized The portions of the Iaw covering nmnes, artistic works such as char-
over the years by many of Brazil's the patentability of substances and acters and their titIes ah'eady pro-
industTiaIized trading partners. In products obtained through chemical tected under copyright.
1993, the cmmtry's <;IId intellectual processes and the patentability of _ Trademark protection runs 10
property regime even landed Brazil alinlentary, phanllaceutical and j years from the date of the grant and
on the United States Trade
Representative's "priority foreign Trademark protection runs 10 years trom the date
country" warning Iist. of the grant and is indefinitely renewable for
Since theu, Brazil has taken great
su-.idesto harmonize its protection subsequent 1O-year periods.
with world standards. The counu)'
in 1994 signed the Uruguay Round medical substances were the brst ele- is indefiniteIy renewable for subse-
of dle General Agreement on Tariffs ments of the bill to pass into Iaw, quent 10-year pel-.iods.
and Trade (GATT), incIuding the taking effect when the Iaw was Registration may be forfeited,
Trade ReIated Aspects of Intellectual signed by President Fernando however, if the mark is not used for
Property Accords (TRlPS) Hemique Cardoso on Ma)' 14, 1996. more than five years, unIess use of
Agreement. Brazil is also a member The new Iaw also creates a new the mark has been Iicensed.
of the WorId Intellectual Property process for appIying for patellt pro- Any modification of the trade-
OrgaJlization (VIPO) and has signed tectiou, and guarantees the secrecy mark's original appearance as
the Beme Convention on artistic of a proposal for 18 IDonths aftá the described in the regisu-ation certifi-
________________ filing. Once the application is cate will be considered an interrup-
approved, the patent is in effect for tion of its legal use.
Erica Aoki is a lau,J'er at the São 20 years while the utility IDodel is A u'ademark renewal is more fie
Paulo offiee of the law jirm, Tozzini, covered for 15 years, with bOtI1of ibIe under the new Iaw, which allo~
Freire, Teixeira e Silva. these tenns computed frolll the for such application up to SL~mont
34 EXPORT TODAV FEBRUARV 19~

3. South America: IPR Update
after expiration of the first term, involved with the applicants on the infoTmation couId be independently
Trademark infringement under terms and conditions af a transfer. deveIoped or properly acquired by
the new law is enforced under crimi- 1111'1'sapproval of a tTansfer reverse engmeermg.
nal and civil statutes, The liability agreement is neceSSaI"YfoI' two rea- Trade-secret protection does not
includes one yeaI' of imprisonment or sons: to make the agreement require registration and there is no
a fine. enforceabIe against third paI1:ies, time limitation on its secrecy.
Civil remedies aI"e also pursuable, including cases where licensees are The Iaw notes that u'ade secret
viÍth damages calculated on actual suing in their own names against status is the only protection availabIe
losses suffered, including lost profits. infringers of their patents or trade- for ideas since there is no require-
Licensing. Under the law, licens- marks; and to make payments by the ment tllat the work be reduced to a
ing allows for third paIues to make Brazilian applicant eligible for remit- tangible fOlm, as ",ith copyrights,
and seU patented products and ser- tance abToad, and subsequent pay- trademaI"ks and patents. ET
vices. The license can be exclusive ments to be tax deductible to the
and can be limited geographically Brazilian applicant for corporate ta...~ A View From Abroad
and by length of time. purposes. lu this case, and if the Brazil's new industrial property law
The new law eliminates any agreement invoIves the payment to a 113sbeen widely praised by the COlUl-
resuictions applicable to royalty nonresident of Brazil, approval from try's n'ading partners.
payments for licensed rights, and the Central Bank of Brazil is The bill "will significantly improYe
places no limits on remittance of required after registration. Brazil"s existillg l'egime for the protec-
royalties abroad. For tax deduction The new law eliminates the tax on tion af patents and u'ademarks," says
purposes, however, royalties ma)' not financial operations, and sets the fhe l"lúted States Foreign COlllluereial
exceed 5 % of net sales in case of withholding tax on payments for Service. In most respeets, the hill "wilI
patents, and 1% of net sales in case technology transfer at 15%, briug Brazil' 5 patent anel trademark
of trademaI"ks. Trade-8ecret Protection. The regime up to international standards,"
lu cases where a counu-y does not new Iaw protects u'ade secrets under Even 50. the uS&FCS has identified
have a double taxation treaty with the Dnfair Competition section. Tlús some areas ",here it believes the indus-
Brazil, the 'withholding ta...~rate on imposes a climinal sanction of up to u"ial property regime is stilllacking:
payments of royalties and teclmoIogy one year imprisonment or a fiíle on • Enforcement is often ··lax.,. D.S,
u"ansfer "iU now be 15%. anyone who illegaUy releases, private scclOr grouP5 estimate that
ln cases where the original patent explores or uses a u'ade secret to piracy of sound recordings, videocas-
owners in some way abuse theu' which he or she has access through settes. hooks alld sofrn'are continues
patent use, a compulsory license for an employment or contractual OOatsllhsrantiallevels." Brazil"s "over-
a different applicant could come into arrangement. This applies even blU'dened" federal eow·ts, meanwhile,
play. Such a compulsory license can where the release of such informa- do not have the expertise to handle
be sought only when a patent tion takes place after the telm of the many intellectual pmperty subjects.
remains idle for three yeaI's or more, applicable agreement. • Brazil's 25-year terIU of pmtection
Teclmology Transferi';. The new To ascertain whether something for computeI' software falIs "consider-
law eliminates the power of the qualifies as a u"ade secret, these ablv short" of tlle Berne Convention
Brazilian Patent and Trademark points must be detelIDÍned: stanclard, which ex-tends 50 years
Office (1111'1)o scrutinize technolo-
t • how idely is the infOlmation be,-ond t hc li Ce of the authar.
gy u"ansfer agreements during the kno",'Il to Iaymen, experts and to • The lleYlaw incllldes compulsory
application procedure. This "ill those 'Íth conu"actual or employ- licensing and local Yorking require-
affect the transfer af patent and ment relationships. ments that "appear to be TRlPS-illcoll-
trademaI'k licenses, of unpatented • the steps taken by the trade sistent." The law permits the granting
knowledge, of cost-sharing and af secret owner to maintain and proteet of a compulsory licellse if a patellt 1
franchise and technieal assistance. the secrecy of the information,
~"Prs approval authOlity is now • the value of the information" owner has faileel to 10caIlymanufacture 1
needed anly to confum the legal sta- • the amOlffit of time, effortand
tus of the licensed u'ademark or money spent in developing the infor- thereceiving the licellse.
of patenteei product withill three years I
1
patent under Brazilian Iaws. This mation. -ETStaO'j
frees the office from having to be • the difficuIty ith which the .. I
~" FXPURl lUDAY FEBRUARY 1997