1) The current prohibitions on the grant of patents for chemical products and processes for the production of pharmaceuticals and foods will be removed and it will be made clear that transgenic microorganisms are patentable.

2) The patent term will be the longer of 20 years from the filing date or 10 years from the grant date of the patent. For utility models the term will be the longer of 15 years from filing or 5 years from grant.

3) Provision is made to allow the patent office to issue regulations permitting original filing in a language other than Portuguese as long as a translation is filed within 30 days. So far, however, no regulations have been issued to implement this provision.

4) At present, examination in Brazil must be requested within 2 years of the publication of the application. However, it is not possible to predict accurately when publication will occur and thus when examination is due. Under the new law, a request for examination must be filed within 3 years of the filing date or the application will lapse.

5) The possibility of filing an opposition before grant will be abolished.

6) The provisions relating to compulsory licensing are modified to agree with the GATT-TRIPS agreement.

7) Provision is made for "pipeline" protection for certain categories of invention that were previously unpatentable, namely, substances obtained by chemical means or processes, medicaments, foodstuffs or chemical pharmaceutical products or methods for obtaining or modifying them. Such pipeline protection will be available as an "extension" of the patent granted in some other country or the first-filed application for protection of the invention. Any Brazilian patent granted on such a pipeline application must be identical with the foreign patent on which it is based and will expire on the same date as that foreign patent. Applications for pipeline protection must be filed prior to:

May 15, 1997,
and are subject to the requirement that the products in question must not previously have been placed on the market anywhere and that there have been no prior serious preparations to place the product on the market in Brazil.

8) Applications filed since January 1, 1995, relating to prohibited subject matter and subject to the "black box" provisions of the GATT-TRIPS agreement will become subject to examination once the new law comes into effect. The question of what to do until the law comes into effect for inventions relating to currently excluded subject matter will need consideration on a case-by-case basis as to whether pipeline protection or filing a "black box" application will afford the best protection.

Under the new law, designs will be registered for an initial five-year period and will be renewable every 5 years for a maximum duration of 25 years.

1) Registrable marks are defined as any visually perceptible distinctive signs (including the shape of products and packaging) not prohibited by law that are used to distinguish the goods or services of one party from those of another.

2) Marks will not be considered registrable if they, inter alia, are colors or names of colors, unless they are arranged or combined in an unusual or distinctive manner; reproduce or imitate a distinctive element of a third party's name or title of establishment where the possibility of confusion or association exists; consist of personal names or likenesses without the person's consent; consist of literary, artistic or scientific words and titles protected by copyright where a likelihood of confusion or association exists; are protected industrial designs. Famous marks registered in Brazil will be guaranteed special protection with respect to all fields of activity. Marks that are well known in Brazil in accordance with Article 6bis of the Paris Convention, whether or not registered, will enjoy special protection and the Trademark Office may reject ex officio an application that reproduces or imitates a well-known mark.

3) Collective marks and certification marks may be registered.

4) Applications for trademarks may be filed in respect of goods or services related to the business activities of the applicant or an entity that the applicant controls, thereby allowing holding companies to own trademarks in Brazil.

5) The user of an unregistered mark who has in good faith used that mark for at least six months prior to the date of his application will have a preferential right to register the mark.

6) After being examined for formalities, applications will be published for opposition and, following the opposition period, or receipt of the applicant's reply to an opposition, the applications will be examined for registrability.

7) Oppositions and cancellation actions may be based on confusing similarity with well-known marks or on the ground of risk of confusion of association with marks about which the applicant, in view of his activities, could not fail to have had knowledge, provided that the proprietor is established or domiciled in Brazil or in a country with which Brazil maintains an agreement or which guarantees reciprocity of treatment. Such proceedings based on these grounds must be supported by a concurrent trademark application for such marks.

8) Trademarks may be the subject of a security interest which must be recorded with the Trademark Office.

9) Registrations will be granted for a period of 10 years from the date of grant. Belated renewal will be permitted within 6 months following expiration, subject to payment of an additional fee.

10) When an application or registration is assigned, the assignment must include all registrations or applications for identical or similar marks relating to identical or similar goods or services owned by the assignor or such registrations or applications may be cancelled or rejected.

11) The recordal of license agreements will no longer be mandatory in order for use of the licensed mark by the licensee to inure to the benefit of the licensor, but recordal will still be required for licenses to be effective with respect to third parties.

12) The initial period of unjustified non-use that will render a registration vulnerable to cancellation will be extended from 2 years to 5 years following grant of a registration. The mark must be used in connection with all the goods or services covered by the registration; otherwise those specified goods or services for which the mark is not being used, and which are not similar to the goods or services in respect of which use in proven, may be cancelled from the registration.

13) An administrative action to cancel a trademark registration may be filed either ex officio or by any party "with a legitimate interest" before the President of the Trademark Office within 180 days from issuance of the certificate of registration.

14) Specific protection is provided for geographical indications.

15) Certain acts of unfair competition are specified as criminal acts.

16) The Customs authorities may seize, either ex officio or at the request of an interested party, any product bearing falsified, altered or imitated marks, or a false indication of source.

17) Appeals may be filed within 60 days of adverse decisions to the President of the Trademark Office. There is no provision for further administrative appeals.

18) Provisions of the new law will apply to all pending applications. Applications for the registration of the advertising slogans and declarations of notoriety will be shelved; however, existing registrations for such rights will remain in effect, but may not be renewed.

19) The new law has adopted a national theory of exhaustion of trademark rights whereby a trademark owner may not control the further distribution of genuine trademarked products that have been placed on the Brazilian market by, or with the consent of, the trademark owner.

Although a requirement to record technology licenses or franchise agreements is retained, the current restriction on freedom of contract is to be removed.