Design Patent Definition in Brazil
A design patent provides legal protection for the unique visual proprieties and qualities of a manufactured item. It may be granted if the product has a distinct configuration, distinct surface ornamentation, or both, but it also has to have practical utility.
In Brazil as in the United States, objects that are substantially similar to something that is protected by a design patent may not be made, copied, used, or imported into the country.
The Brazilian term for a design patent is “Desenho Industrial,” which is specified in article 95 of the Law of Industrial Property (law nº 9.279 of 1996).
Examples of design patents include ornamental designs on jewelry, automobiles, furniture, and even computer icons (such as emojis). The original curvy Coca-Cola bottle and the Statue of Liberty are among the most famous design patents in history.
Design Patents VS Artwork
There’s a situation that may cause some misunderstanding, and that’s the legal protection applicable to design patents versus works of art, since they are both aesthetical creations. And there is also an important difference between Brazilian law and American law on this point.
Under American law, a design patent may be granted for any article of manufacture. The design patent granted for the Statue of Liberty was not for the big famous statue; rather it was for small copies of the statue that were produced and sold for fundraising purposes.
Under Brazilian law, it would not have been possible to receive this patent. Brazilian law specifies that the product has to have some sort of utility function – it can’t simply be a decorative object, such as a small statue. If the artist wanted to somehow embed the Statue of Liberty design in a product that has some use – such as a coffee mug – that would be patentable.
In Brazil design patents are ruled by the Law of Industrial Property (LIP), which requires registration. Artwork, such as the Statue of Liberty, including small copies of the Statue of Liberty, would be protected under Copyright Law (in Portuguese “Direito Autoral”, law nº 9.610 of 1998).
Another possible source of confusion because of translation issues is the American English term “Industrial Drawing” and the Brazilian Portuguese term “Desenho Industrial,” which is typically translated into English as “Industrial Drawing.”
Despite a literal translation of Desenho Industrial being “Industrial Drawing,” what it means in Brazil is “Design Patent.” The English term “Industrial Drawing” is a broader term that doesn’t necessarily have anything to do with patents – it can be used for any kind of drawing used for industrial purposes including technical drawings in a manual, schematics, etc.
Design Patent VS Utility Patent
These categories of patents should not be confused. The utility patent safeguards an item’s way of operating, its performance or functionality, while the design patent protects how an object looks.
It is possible that a single product may have both design and utility patents at the same time; for example, Apple’s iPhone is protected by both numerous utility patents as well as design patents.
Legal Protection for Industrial Property in Brazil
Legal protection for intellectual property in Brazil is governed by Law of Industrial Property (“LIP,” law nº 9.279 of 1996). Although the main subject of this article is about design patents, it is important to note that the rights of industrial property in Brazil, protected by the given law, encompass not only this, but also: Invention, Utility Model and Mark.
The invention and the utility model are protected through the concession of a patent, while the design patent and the mark are protected by the concession of a register.
The National Institute of Industrial Property
The National Institute of Industrial Property (in Portuguese “Instituto Nacional de Propriedade Industrial” – INPI), is the federal autarchy responsible for granting privileges and guarantees to inventors and creators in Brazil. Brazilian autarchies are independent quasi-governmental organizations that are part of the Brazil indirect administration.
The legal text says that the INPI’s main goal is to execute the national rules relating to industrial property, as well as giving opinions about the convenience, ratification and denunciation of conventions, international treaties and deals linked to industrial property.
Under Brazilian law, all decisions of the INPI may be subject to judicial review.
The INPI is roughly equivalent to the US Patent and Trademark Office (USPTO). The purposes and goals of the two organizations are similar, although the organization’s laws, organization, and procedures are different.
Design Patent Eligibility in Brazil
In order to be eligible for a design patent the following criteria must be met:
- Industrial application; and
To meet the novelty requirement, the design must not be found in the prior art at the time of its filing or priority date. An exception is made allowing a disclosure within the preceding 180 days it it was made by the inventor, the INPI, or a third party that received the information directly or indirectly from the inventor.
The originality requirement is met if the design patent results in a unique visual configuration compared to other previous objects.
Article 100 of the LIP establishes criteria for designs that are not eligible for design patents, including the following:
I – Whatever is against moral and good customs; or that offends the honor or the image of the people; harms the freedom of conscious, belief or any ideas or feelings worthy of worship and respect; and
II – The design refers to the necessary common or ordinary shape of the object, determined by technical or practical reasons, not design considerations
The second point means that even if your design is new, if there is only one way you could make it for the object to work, it cannot be protected with a design patent.
Eligibility Requirements for the Author of Design Patents in Brazil
Not only must the product fulfill certain prerequisites, the author also must be eligible. These are the requirements relating to the author of a design patent:
I – It is presumed that the claimant is authorized to obtain the patent, unless proven otherwise;
II – The register can be accomplished by the claimant themselves, by their heirs or successors, by the assignee, or by whomever the law or legal contract grants ownership of the work;
III – If the design were made by two or more people, the registration can be in the name of all or any of them, providing that the others are named and qualified in order to respect their rights;
IV – The creator of the design patent may optionally be named and qualified as well;
V – If two or more authors have independently requested to register the same design, the right for the request will be given to the oldest request (first to file);
VI – In the event of multiple filings for the same design, the removal of the oldest requirement, without it taking effect, will give priority to the second oldest (an exception of the previous principle).
Registering a Design Patent in Brazil
The procedure for registering a design patent is described article 101 of the LIP, and it is quite simple, only requiring the following information and documents:
I – The registration itself;
II – Descriptive report – if needed;
III – Claims – if needed
IV – Drawings or photographs;
V – Application field of the object; and
VI – Receipt of payment.
A few words regarding payment. This is a fee that must be paid in order to get your registration accepted, in Brazil it is called “Guia de Recolhimento da União”. We recommend consulting with a competent attorney for detailed information on the procedures and payment.
All of the above documents must be written in Portuguese.
After filing the request the application will receive a preliminary examination. The INPI may accept it with small irregularities, which the claimant will be given five days to fix.
Finally, the author of the application must also pay attention to the fact that the design patent must represent the object, and its variations (if any) in a clear and sufficient way to make possible to be reproduced by a specialist in the area.
Granting of the Design Patent
The INPI processes design patents fairly quickly, they are typically granted six months to one year after filing. Patent owners appreciate that publication and grant happen simultaneously.
After publication others can challenge the novelty and originality of the design. On request the INPI will conduct a review, and if it is found that the product is not novel or original, a process can be instituted to nullify the patent. For this reason, it’s recommended to have a qualified patent attorney prepare or review the registration and be engaged in the event of a challenge to the patent.
Design Patent Lifespan
Once the patent is granted, the owner of the patent will receive a registration certificate, which will contain the title of the product along with the owner’s name, nationality, place of residence and information regarding foreign priority, among other documents. The certificate also includes the expiration date for the patent.
In Brazil the patent is initially valid for ten years from the date of payment. The LIP allows three five-year extensions for a total maximum patent life of 25 years.
The request for an extension must be made during the last year of the patent’s lifespan. There is a 180-day grace period after the expiration date to request an extension, which will be granted with the payment of an additional fee.
Maintenance fees are payable to the INPI every five years after the date of the original payment. The first maintenance fee is included in the original filing fee.
As with extensions, there is a 180-day grace period for the payment of maintenance fees, with late charges incurred.
Protection Afforded by Design Patents in Brazil
As with US patents, a Brazilian patent is a “right to exclude,” granting the owner of the legally registered design patent exclusive economic rights to the design protected by the patent.
Nullification and Expiration of Design Patents in Brazil
If the patent was granted contrary to the legal requirements of the LIP, it will be invalidated retroactive to the date of grant.
A request for an Administrative Process of Nullification with INPI according to article 94 of the LIP must be made within five years of the grant of the patent.
Patents may expire for the following reasons:
- Reaching the end of the patent life (maximum of 25 years with extensions)
- The owner renouncing the patents (while respecting the rights of other involved parties)
- Failure to pay required maintenance fees
Additionally, a patent owner living outside of Brazil must have a legally qualified attorney resident in Brazil with powers to represent the owner both judicially and administratively. Failure to comply with this requirement may result in the nullification of the patent.
Feel free to contact me with any questions you may have regarding filing design patents in Brazil.
Helder Leonardo de Souza Goes
OAB / SE 5.853
– USPTO Design Patent Application Guide
– Industrial Design in Brazil