Technology and Franchise Agreement Registration
Browse topics
Protect Your Business Right Now
There are many reasons why people register licensing contracts for the exploitation of patents, industrial designs and trademark use licenses, as well as registering technology transfer and franchise contracts: licensing them to a company, obtaining a license to boost the business, protecting their assets, and wanting to obtain knowledge of technologies that are not supported by industrial property rights.
It is important to keep in mind that, in addition to the guarantee that the registration and endorsement of contracts with the INPI (National Institute of Industrial Property) provides to those involved, it is also the only way for the Central Bank of Brazil to authorize the remittance of foreign currency abroad as a form of payment for the transaction, as well as to agree to the payment.
INPI defines this contract as the commitment between the parties involved in the process, fully formalized in a document, in which the technical aspects and economic conditions of the transaction are determined. Read the text to learn more details about this contract!
What is a contract involving industrial, technology and franchise property?
According to the Industrial Property Law No. 9,279/96 and Normative Instruction No. 16/2013 of the National Institute of Industrial Property, this contract is one that involves the license to use brands, exploitation of industrial designs, exploitation of patents, franchising, acquisition of technological knowledge and technical assistance.
The legal definition also includes contracts for the assignment of industrial property rights, when the holder of the right resides outside the country, in accordance with the provisions of article 3 of the aforementioned Normative Instruction.
In other words, we are talking about all contracts involving the licensing or assignment of industrial property, whether it is subject to protection by temporary monopoly (trademarks, industrial designs and patents) or not (in the case of industrial secrets and know-how).
The objective is to provide access to third parties who are interested in commercially exploring and developing industrial property, technology or franchise, whether through processes, products or application in services and/or materials.
Why is it important to have a franchise agreement?
Well, the franchise system has been a major trend worldwide and is increasingly developing here in Brazil, where entrepreneurs are increasingly seeking innovative strategies through alliances and business partnerships.
In general, in this system, the franchisor grants its franchisee the right to use the brand or patent and also the permission to distribute services or products, through indirect or direct remuneration, without an employment relationship.
Franchising contracts have been governed by Law No. 13,966 of 2019 since March 26, 2020, which repealed Law No. 8,955 of December 15, 1994. This contract is a document that aims to formalize a commercial agreement in accordance with the parties, to provide products or services to third parties, who are the true final recipients.
Therefore, we are talking about an instrument of fundamental importance. After all, it is through this instrument that all rights and obligations between the parties will be defined.
It is worth remembering that the main document that makes up this contract is the COF (Franchise Offering Circular). Some of the main clauses present in the COF are the amounts of the fees, the financial statements, the layouts, the initial investment required, the geographic area of operation, support provided by the franchisor, and many others. According to the Franchising Law, the COF must be delivered at least 10 days before the signing of the contract to the interested party. If this is not done, the franchisee has the right to request the cancellation of the business and request the refund of the amounts paid.
Remember that the contract must always be in writing and signed in the presence of two witnesses. Furthermore, it is important to note that it will not be valid forever, so it is essential that the franchise contract be renewed.
What types of contracts can be made and what are the requirements?
There are numerous contracts that can be signed between interested parties. Check out the main ones below!
License to use a trademark
This is a contract that authorizes third parties to use a duly registered trademark for a period of time. To request this license, it is necessary to indicate the trademark process number with the INPI, the conditions of use and, of course, whether there is the possibility of sublicensing it.
Trademark assignment
A contract that definitively transfers ownership of the trademark to third parties. For this to happen in accordance with the law, the trademark must be registered and the owner must request this transfer from the Trademark Office (INPI).
License for exploitation of industrial design
It is a contract that authorizes third parties to exploit an industrial design for a certain period of time.
Assignment of industrial design
In this contract, unlike what happens in the case above, there is a transfer of ownership of the design. To be viable, the material must be regularized with the INPI and the owner must request the transfer before the Industrial Design Directorate of that Agency.
License to exploit a patent
This contract authorizes third parties to exploit a patent that has been duly granted or filed. This license is for a fixed period of time and must define the conditions related to the exclusivity or non-exclusivity of use, and also specify whether there is permission to sublicense the patent.
Patent assignment
The purpose of this contract is to definitively transfer ownership of the patent to another person, government or company. For it to be valid, the owner must request the transfer of the patent from the Patent Office (INPI).
Compulsory patent license
This is a request for the patent holder’s exclusive right to be temporarily suspended. Thus, the patent holder is subject to a compulsory license when the object of the patent is not being exploited in Brazil due to incomplete production or lack of manufacturing, or due to abuse of economic power.
It can only be requested three years after the patent is granted and always by people who have the economic and technical capacity, as well as the interest to explore it.
Integrated circuit topography license
This agreement allows an integrated circuit topography registration to be exploited for a certain period of time. If the transfer of this technology is requested, its ownership will change.
Franchise
A contract that temporarily grants a business model involving a trademark or patent, services, transmission of standards and transfer of technology.It must contain the registration number and/or application for industrial property rights, as well as specific information about the franchise, the financial statement and the ideal franchisee profile. In addition, it is necessary to present the COF, a document already mentioned above, which contains all the important data about the business.
Technical and scientific assistance services
This is a contract that aims to obtain techniques to create a specific study or project and provide a specialized service.
Supply of technology
Finally, this contract aims to acquire techniques and knowledge that are not covered by industrial property rights. License contracts for the use of computer programs are included and must include: the set of information and technical data that enable manufacturing.
What services are not characterized as technology transfer?
Under Article 211 of Law No. 9,279/96, since they are not characterized as technology transfer, certain specialized technical services are exempt from registration. Check out the list below:
- Brazil, which do not generate reports and documents, such as product processing;
- Purchasing agency, and here logistics services are included (administrative tasks linked to customs clearance, shipping support, etc.);
- Certification and approval of product quality;
- Consulting in the commercial sector;
Consulting in the financial sector; - Consultancy for the purpose of participating in bidding;
- Consulting in the legal sector;
- Remote consultancy, without generating documents;
- Marketing services;
Installation, implementation, deployment, support, maintenance, integration, adaptation, customization, certification, configuration, migration, translation, parameterization or localization services for computer programs; - License to use computer program (software);
- End-user training services;
- Acquisition of a single copy of a computer program;
- Distribution of computer program.
Who is it suitable for?
An invention or trademark is, without a doubt, the greatest financial asset of an individual or legal entity. Therefore, the protection extended to them is essential and indispensable for those who wish to protect them, preventing them from being used, counterfeited or copied improperly.
Therefore, it is possible to take appropriate measures, as there is legal support. Anyone who wants to transfer their intellectual property, technology or franchise will certainly seek registration to have greater security in the agreement made.
Why should I register or endorse the contract?
The registration or endorsement of the contract is mandatory when the holder resides abroad, and is optional for domestic contracts. However, registration is highly recommended in all situations, as it guarantees a truly secure agreement, in addition to conferring validity before third parties.
It is worth remembering that Article 211 of the Industrial Property Law specifies the need for registration with the INPI to produce effects in relation to third parties. In the case of a franchise, for example, this is essential, because if another person registers a trademark identical to the franchise, it is possible to file criminal and civil actions against them, as they will be making a profit from another person’s trademark.
Discover the credibility and quality of the VILAGE registry
To have a contract involving intellectual property, technology and franchising that is truly in accordance with the law, it is essential to have specialized and qualified professionals to draft, analyze, review and provide opinions on such contracts.
A specialized company will promote the registration or endorsement of contracts with the INPI, having daily control and monitoring of the necessary measures and deadlines throughout the duration of the contract. Therefore, hire industrial property specialists to produce your contract, as they will insert the correct clauses according to the case in question.
VILAGE actively participates in all stages related to negotiation, drafting, review and, of course, the effective registration of the contract with the INPI. This ensures greater security, avoids errors and does not have to make corrections, delaying the issuance of the endorsement or registration certificate – after all, all of this costs money.
VILAGE is committed to excellence in services, with experienced and specialized professionals to carry out all processes with total care and safety.
Because our focus is to guarantee personalized service to our customers, always considering each person’s needs.
Our services are all certified by BSI Brazil in the requirements for operating the Quality Management System in accordance with ISO 9001.
Frequently asked questions
Well, it is usually 30 days, always counting from the date of publication of the registration request in the RPI or the petition, in accordance with Article 211 of the law.
It is important to keep in mind that no company can offer the possibility of becoming a franchisee if it does not have a trademark registration or patent. For this reason, the COF must bring the status of the trademarks or patents to the INPI.
According to Law No. 9,279/96 (Industrial Property Law), only those who register a trademark own it. Therefore, trademark registration for franchising is mandatory with the INPI
To avoid complicated situations like this, contracts usually include a non-competition clause in their wording. This determines a period in which the former franchisee is unable to open a business that becomes competition for the franchise. Fines are stipulated to ensure compliance with this clause. In addition, it may even constitute a crime against trademark registration, patent registration or unfair competition as provided for by the Intellectual Property Law.
Once the object of the contract has been defined, it is necessary to establish its scope, that is, the way in which the intellectual property, technology or franchise will actually be used. The use, modification, sublicensing and export of the technology are some of the existing options.
Furthermore, it is necessary to determine the territory where the technology will be explored, that is, where it will be produced, commercialized, etc. Analyzing the market segment at this point is essential to make the best decision.
It is essential to draft a contract that guarantees security and protects industrial property, technology or franchise. However, to draft such a document, it is best to hire qualified professionals. Note: you should avoid using ready-made templates from the Internet. After all, everything that is included in the document will be required by law. Therefore, if you draft the contract incorrectly, you may end up harming yourself.
