Everything about PATENT MAINTENANCE FEES in Brazil

Invention, Utility Model and Certificate of Addition Patent Applications and Registrations are subject to payment of annuity fees in Brazil.

DEADLINES

Payments are due since the beginning of the 3 rd year after the filing date; In other words: From the 24th month after the filing date.

Important remark: Filing date = International Filing Date of PCT for National Phase Applications

Example: International Filing date (PCT) or Direct Filing Date: 31/Dec./2020

• 1st Annual Fee (3 rd year) to be paid from 31/Dec./2022 (open window = 24th month from the Filing date) to 31/March/2023 (DEADLINE) | Grace Period of 6 months (under extra fees): 30/September/2023.
• 2nd Annual Fee (4 th year) to be paid from 31/Dec./2023 (open window) to 31/March/2024 (deadline).

Deadline fell due prior to the date of entry into the national processing

If you enter the National Phase and the deadline has already fallen, you have 3 months from the date of National Phase Entrance to pay the first annual fee (Art. 85, Brazilian IP Law).

Remark: The other annual fees are counted from the International Filing date.

Example: International Filing date (PCT): 31/Dec./2020

Priority date: 30/November/2020

National Phase Entrance in Brazil (30 months from Priority): 30/May/2023

• 1st Annual Fee to be paid from: 30/May/2023 (open window = Date of National Phase Entrance) to 30/August/2023 (Deadline – 3 months from the date of National Phase Entrance)
• 2nd Annual Fee to paid from 31/Dec./2023 (open window) to 31/March/2024 (deadline)

RESTORATION

What if I fail to pay the Annual Fee after the Grace Period?

The failure to pay the annual fee shall result in the dismissal of the application or extinguishment of the patent registration.

Is it possible to restore the application/registration due to the lack of annual fee payment?

It depends on the date of notice of dismissal/extinguishment.

The patent application or the patent registration may be restored if the applicant/owner requests the RESTORATION within 3 months from the Notice of the dismissal/extinguishment of the patent, under payment of a specific fee for restauration and the annual fee due (grace period fee).

Remark: You do not need to await the Notice of dismissal/extinguishment. You may pay the Restoration fee and the annual fee due (grace period) in order to avoid the publication of the notice of dismissal/extinguishment.

DISMISSAL/EXTINGUISHMENT

After 3 months from the Notice of dismissal/extinguishment of the patent, may I restore the application/registration?

According to the Brazilian IP law, the answer is no, however, we kindly suggest you to consult

a Brazilian IP expert to analyze the case (case-by-case analysis).

PATENT TERM

• Invention Patent – 20 years from the date of filing
• Utility Model Patent – 15 years from the date of filing
• Certificate of Addition – It follows the Invention Patent Term (accessory of the Invention Patent)

Remark: Some patents in Brazil receive a minimum term counted from their grant, however, the Supreme Court (STF) annulled that legal provision (Art. 40, sole paragraph of Brazilian IP Law).

Do you have any further question? Consult us at info@cnvbrazil.com.br