Design Patent Application Procedure in Brazil

Submitted by song on Thu, 02/20/2025 - 22:08

来源：

页之码IP

Patent Trademar

Application Procedure

According to Articles 99 and 101 of the Intellectual Property Code, and in accordance with the conditions established by the National Institute of Industrial Property (INPI), an application must contain:
- Request
- Instructions (if any)
- Claims (if any)
- Priority claim (if any)
- Drawings or photos
- Locarno Classification
- Proof of payment of application fee
- All documents must be submitted in Portuguese
- Foreign applicants must appoint a Brazilian law firm or attorney who has the authority to represent the applicant in administrative matters and court appearances, including receiving summonses.
- Foreign applicants must also submit a signed power of attorney when filing the application or within 90 days from the filing date.
- A confidentiality request can be made when filing a new application, but the applicant must make the request when submitting a new application, otherwise the application will be automatically published after authorization. The confidentiality period is 180 days from the date of application.
Priority claim:
- Priority information Priority must be claimed in the request. A copy of the priority document must be submitted within 90 days from the filing date, otherwise the priority claim will lapse. Starting October 2, 2023, Brazilian priority can be claimed by DAS.
Formalities Examination
- Once an application is filed, it will be subject to formal examination. The applicant must respond to the formal correction notice issued by INPI within five days from the date of the correction. If the applicant fails to respond in time, the application will be deemed withdrawn.
- After the formal examination, the application will enter a more substantive examination, which is an assessment of the technical content of the application: the subject matter itself, the drawings, and, where applicable, the description and claims. Specifically, the examiner will analyze whether the subject matter and the application comply with the requirements of Articles 100 and 104 and the Industrial Design Manual. The applicant must respond to the examiner's opinion within 60 days from the date of issuance, otherwise his application will be deemed abandoned. This deadline cannot be extended.
- Content that is contrary to morality and good dress, content that is offensive or contrary to freedom of conscience, belief, religion, etc.; the necessary common or ordinary shape of an object, or a shape that is mainly determined by technical or functional factors, is not registrable. Generally speaking, most objections related to Section 100 are related to the second part, that is, objects that lack decorative features. For example: simple screws, gears, connectors, pipes, etc. (the form is determined by technical or functional factors); cubes, spheres, prisms or any purely geometric shapes (the form is considered ordinary or general).
- A design patent application that does not comply with the requirements of Section 100 will be rejected.
- An industrial design application must be for a single subject matter, may contain up to 20 variations , belong to the same Locarno Classification, be used for the same purpose, and retain the same main distinctive features.
- Division: These formalities are generally issued if the total number of variants in a design patent application exceeds 20 or when the variants do not have the same main and distinctive features, and the INPI will request the applicant to file a divisional application.
  - In addition to stating the reason why the application needs to be divided, the official document also details how many divisional applications can be filed and which groups of changes or subject matter each application should contain. The applicant can choose to retain only the original application and one group of changes or subject matter.
  - The applicant may file an objection to the examination opinion requesting the division of the application, or propose a different way to divide the original application, or object to the examiner's decision to divide the application.
- Image requirements: The design must clearly and fully represent the object and its variants so that it can be reproduced by a skilled technician. If it does not meet the requirements, the applicant must respond within 60 days from the date of publication.
  - All objects should be shown in such a way that all external features of the object are clearly visible. 3D objects should be represented in all elevation views (front, back, side, top, and bottom) and in at least one perspective view. Exceptions may be made for omitting mirrored or identical views.
  - Drawings must be submitted in JPEG format. Each drawing must not exceed 2MB and the image must be at least 300dpi.
  - Submitting drawings within the recommended settings does not preclude an opinion on the quality of the drawings if the examiner considers that the drawings do not adequately disclose the design. Conversely, submitting drawings that exceed the recommended specifications does not automatically result in an opinion.
  - From October 2, 2023, the INPI will allow disclaimers for some objects using dashed or broken lines . Therefore, if the design uses dashed or broken lines, the description must contain a disclaimer for the above-mentioned parts.
  - There is no requirement for "shading" to represent a three-dimensional surface. If there are too many shading lines that hinder the visualization and understanding of the object, they must be removed.
  - Cross-sections or cutaways are permitted to illustrate the interior details of an article. However, any parts and/or elements visible only in the cross-section are excluded from the scope of protection.
  - The subject matter of an industrial design application filed in Brazil must be identical to that described in the priority document.
  - Any modification of the image that causes it to differ from the subject matter described in the priority document (even if the difference is minor) may result in the loss of the priority right. In addition, the applicant may not modify the image to make it consistent with the subject matter described in the priority document, which would be considered as adding new matter or changing the claimed subject matter.

The Hague Appearance:

For Hague design applications designating Brazil, if the registered design does not comply with Brazilian patent law, INPI will send a refusal notice to WIPO and publish it in the Official Gazette.
Any response to such a refusal should be submitted directly to the INPI.
In the exceptional case where the INPI notifies a refusal and requires the applicant to file a divisional application, the divisional application must be filed directly with the INPI.
Likewise, foreign applicants must appoint and maintain a law firm or attorney at the time of filing. In other words, there can be only one international application, which means that the divisional applications arising from the international application will be considered as domestic applications in Brazil, and therefore any fees and renewal fees related to the divisional applications must be paid to the INPI.

Authorization

When the examiner determines that the application meets all requirements, the application is granted and published.
From application to authorization, the average authorization time is 3 months . If there is an examination opinion, the average authorization time may be up to 6 months.

Substantive Examination

INPI only conducts formal examination for industrial designs, but according to Article 111 of the Intellectual Property Law, the owner may request a substantive examination (novelty and originality examination) before the design is granted.
The design owner who intends to apply for substantive examination needs to file a request for substantive examination with the INPI and pay a fee of R$ 355. The INPI will issue a conclusive report on the relevant issues, stating its conclusions and opinions. However, if the examiner believes that the design does not meet at least one of the requirements of novelty or originality, an ex officio administrative invalidation procedure will be initiated.

appeal

If a design application is rejected, an appeal can be filed within 60 days from the date of publication of the decision in the weekly Official Gazette.
Any interested third party may file a rebuttal to the appeal within 60 days of the publication of the appeal against the rejected decision in the Official Gazette.
According to Article 215 of the Brazilian Intellectual Property Law, the appeal decision is final and no further administrative action may be taken.
The official fee for appealing a rejection decision is R$ 380.

objection

There is no pre-grant opposition procedure for industrial design applications in Brazil, and third parties will not know the object of the design until after the grant decision. However, industrial design registrations can be revoked through administrative procedures or Brazilian courts.
Administrative invalidation proceedings may be initiated within five years from the date of publication of the decision to grant. However, if the proceedings are initiated within 60 days of the issuance of the decision to grant, the effects of the registration will be suspended until the INPI makes a final decision on the invalidation proceedings.
After the invalidation request is filed, the INPI will publish a notice of the administrative invalidation request and give the title holder 60 days to respond. After the title holder submits his response, the INPI will analyze the request and the title holder's arguments and then publish the invalidation request and written opinion in the Official Gazette. This report informs the parties and the public of the INPI's preliminary opinion, whether to maintain or declare the industrial design invalid. From this notification in the Official Gazette, the owner and the invalidation requester will have 60 days to submit their respective opinions to the Industrial Design Institute.

Duration of protection