Protecting IP ownership and rights in Brazil: 7 things employers need to know

You already know how important your company's intellectual property is. Your inventions, designs, patents, trademarks, copyrights, and trade secrets are the foundation of your success, giving you a competitive edge over other businesses.

But when you expand your global operations into new countries, IP protection becomes much more complex. Every country has its own laws and regulations surrounding IP protection, and Brazil is no different.

Protecting IP ownership and rights in Brazil takes know-how around a whole new set of laws. And it's vital to learn them—if you don't protect your IP in Brazil, you could end up facing legal disputes, loss of market share, and other damages.

Before you start hiring in Brazil, read this guide—our primer will give you all the basics on protecting your company's IP rights and ownership in Brazil. Below are seven things you need to know about IP protection in Brazil, as well as frequently asked questions (a quick disclaimer before we get started: our guide is for informational purposes, and isn’t intended to provide legal advice).

1. Piracy is common in Brazil

The United States Government has placed Brazil on its Special 301 watch list. Even though Brazil belongs to all major global intellectual property conventions, counterfeiting, and piracy (especially online piracy) are both common in Brazil. The country has tough laws against violating others' IP rights, but enforcement can be sporadic.

That's why it's so important to take all possible steps to protect your company's IP when operating in Brazil (more on that below).

2. Protection of IP registered in other countries doesn't automatically extend to Brazil

IP protection in your business's home country doesn't automatically extend across international borders, and you may need to obtain IP protection in other countries where you plan to do business—including Brazil.

In Brazil, you can apply for protection for:

• Invention patents
• Utility model patents
• Trademarks
• Copyrights
• Industrial designs
• Geographical indications
• Computer programs
• Plant breeds

The process of applying for IP protection is similar to what you'll see in many other countries, with the important caveat that Brazil is known for being slow to process certain types of IP protection—the current average pending time for patent applications is currently over seven years from the date of filing.

Brazil is a member of the Patent Cooperation Treaty (PCT), so foreign applications can file IP protection applications from outside Brazil and are given priority processing when doing so. Priority is also given to foreign applicants who hold IP protection in other countries, per the Paris Convention. Brazil also belongs to the Madrid Agreement Concerning the International Registration of Marks 1989 (Madrid Protocol), making it possible to file IP protection applications before the World Intellectual Property Organization (WIPO) and designate Brazil.

Note that foreign applicants applying for IP rights in Brazil must be represented by a Brazilian patent attorney.

IP in Brazil is registered in different places, depending on the type of IP:

• The Brazilian Patent and Trademark Office (BPTO) and the National Institute of Industrial Property (INPI) are responsible for patents, trademarks, geographical indications, and industrial designs.
• As in many other countries, the copyright for artistic works, computer programs, and compilation works is automatic, with no formal registration required. However, copyright protection can be registered—and the main authority for doing so is the Copyright Office of the National Library. Brazilian Copyright Law also allows for registering copyrights through the School of Fine Arts and the School of Music at the Federal University of Rio de Janeiro.

And intellectual property needs to meet legal criteria to be eligible for protection, which varies depending on what type of IP it is. Inventions, for example, need to meet the requirements of novelty, an inventive step or functional improvement, and industrial application to be eligible for patent protection.

3. NDAs are enforceable in Brazil

In Brazil, NDAs are common and generally considered enforceable as long as they meet a few requirements:

• They must comply with Brazilian contract law.
• When breached, the aggrieved party must be able to prove damages.

NDAs are commonly used by employers in Brazil to protect their IP and other confidential company information when onboarding new employees or contractors. But an NDA isn't necessarily enough to ensure your company's IP is protected while you do business in Brazil—more on that below.

4. But NDAs aren’t enough to govern your ongoing relationships with employees and contractors

Having a new employee or contractor sign an NDA can protect your company's existing IP. But because confidential information needs to be defined within the contract, an NDA doesn't cover future IP, including in a case where the employee or contractor will be helping to create or develop it.

In Brazil, several intellectual property laws exist to help define who owns what when an employee or contractor creates new IP. But the best way to ensure your company retains ownership of confidential information created by employees and contractors is through assignment agreements, which assign ownership of the IP to the company, rather than the employee or contractor.

5. Assignment agreements are enforceable, with some caveats

Assignment agreements are generally considered enforceable in Brazil, but they must meet certain requirements depending on the type of IP being assigned.

Patents and utility models

Rights to patents and utility models can be assigned in whole or in part.

The assignment must be:

• In writing
• Signed by both parties
• Notarized and legalized by an apostille
• Recorded with the BPTO

Trademarks

Both trademark applications and trademark registrations can be assigned, but only in whole (not in part). The assignment needs to include all trademark rights (or applications) in the assignor's name for similar products or services, or the assignment may be denied.

The assignment must be:

• In writing
• Signed by both parties
• Recorded with the BPTO

Copyright

Copyrighted works can be assigned in whole or in part to a third party, but moral rights cannot be assigned or waived (meaning the original author of the work retains the right to be credited for the work and to maintain its integrity over time).

Copyright assignments must be:

• In writing
• Signed by both parties
• If the copyright is registered, the assignment should also be recorded with the registering body

Industrial design

According to Brazil's Industrial Property Law, industrial design rights can be assigned in part or  in whole.

Assignments must be:

• In writing
• Signed by both parties
• Notarized and legalized by an apostille
• Recorded with the BPTO

6. The inventor or author of IP created in Brazil is generally assumed to be its owner unless certain conditions are met

Without an assignment agreement, the creator of a piece of IP is assumed to be its owner, except in limited circumstances under Brazil's Industrial Property Law:

• If the inventor was working under an employment agreement to perform research or inventing activities
• If the inventor was hired specifically to create new IP

Under these conditions, the IP would be owned by the inventor's employer. However, this would not apply to anything the inventor developed outside the scope of their employment without using resources, means, data, materials, installations, or equipment belonging to the employer.

In Brazil, it's also possible for employers and employees or contractors to share joint ownership of IP. This can occur if the inventor creates the IP outside the scope of their employment, but uses resources or materials provided by their employer, for example.

In other words, IP assignment is complex in Brazil. The safest way for companies to protect their own IP is to register it with the correct governing bodies and execute assignment agreements for any IP created by their employees or contractors.

7. You're responsible for enforcing your own IP in Brazil

While the Department of Federal Revenue of Brazil (Secretaria da Receita Federal do Brasil) does some IP enforcement by stopping counterfeit goods from entering the country, the majority of the onus for protecting IP falls on rights holders.

Typically, IP disputes go before Brazil's state courts, though they can be heard by federal courts if the alleged infringer is a federal entity. Courts can impose a variety of penalties for unauthorized IP use, including monetary damages, imprisonment, fines, temporary or permanent injunctions, and search and seizure orders.

Rights holders can also choose to pursue dispute resolution outside of the courts, such as arbitration or mediation. These can be faster and less costly ways to deal with IP disputes.

Frequently asked questions about IP law in Brazil

Who owns IP in Brazil: employee or employer?

The bottom line: in most cases, an employee or contractor owns their own IP unless they were hired specifically to create it or they have a contractual duty to assign IP rights to their employer. As a global business, the onus is on you to ensure you have the right legal agreements in place to cover ownership of IP created by your company, its employees, and its independent contractors.

What is a PIIA agreement?

If you're familiar with IP ownership rights (particularly in the US or Canada), you may have heard of a Proprietary Information and Inventions Assignment Agreement (PIIA), a legal contract between an employee or contractor to establish the ownership and protection of intellectual property created by the employee or contractor during their employment or work arrangement with the company.

PIIA isn't a common term in Brazil, where these types of contracts are known informally as assignment agreements.

What is a CIIA agreement?

CIIA stands for Confidential Information and Invention Assignment. This is just another name for a Proprietary Information and Inventions Assignment (PIIA). Some other names this type of agreement may go by include:

• Employee Confidentiality and Inventions Assignment Agreement
• Proprietary Information Agreement
• Employee Intellectual Property Assignment Agreement
• Protection of Company Interests Agreement

What is an IP assignment agreement?

An IP assignment agreement is a legal contract that transfers the ownership rights of a piece of intellectual property from one party to another. Assignment agreements are common in employment or work relationships in Brazil, when employers want to own the intellectual property rights—patents, copyrights, trademarks, industrial designs, etc.—for IP created by their employees or contractors.

Are assignment agreements and NDAs the same thing?

No. NDAs apply to IP and protected assets that already exist at the time the contract is signed.

Assignment agreements are used to reassign ownership of IP to someone new and are frequently used in Brazil to ensure employers own IP created by their employees and contractors during their employment or work arrangement.

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Rippling and its affiliates do not provide tax, accounting, or legal advice. This material has been prepared for informational purposes only, and is not intended to provide, and should not be relied on for tax, legal, or accounting advice. You should consult your own tax, legal, and accounting advisors before engaging in any related activities or transactions.