Beware the special requirements of software protection in Brazil

IPKat has long observed that IP law in Brazil will sometimes adopt a sui generis approach to an issue, especially at the administrative level, which makes it imperative that IP practitioners be fully aware of the particular requirements under Brazilian law. The protection of computer software is a notable example, especially with respect to issues of registration and secrecy. Kat friend Thereza Curi of the Kasznar Leonardos law firm discusses the most recent development in this regard against the existing legal and administrative background.

"IP protection of computer software in Brazil is governed by Law nº 9.609, of February 19, 1998. Strictly speaking, it is independent of registration, because the protection that it provides derives from the local copyright law, under which registration is not mandatory but rather is merely optional and declaratory in nature. However, in case of any judicial dispute related to the question of ownership, the registration may be used as relevant proof of ownership. The public body responsible for registration of software in Brazil is the Brazilian Patent and Trademark Office, ("BPTO").

The term of software protection in Brazil is 50 years, counted from January 1st of the year following its publication or, in the absence of publication, counted from the date of its creation. At the time of registration, the applicant may also request before the BPTO that the software be filed under secrecy. In such a case, the documentation filed at the Office cannot be disclosed, except if requested either by a court or by the registrant itself. Should the software already have been registered in any other country that is a signatory to the Berne Convention, a new registration in Brazil will not be necessary, since foreign registration in such countries is recognized in Brazil. In case a foreign applicant wishes to license or commercialize its software within Brazilian territory, it is also exempted from registration.

Maintenance of secrecy is solely the responsibility of the applicant. Previously, such secrecy needed to be updated every 10 years. Currently, when the registration is made on a confidential basis, it remains valid for the total 50- year term, without the need for renewal.Against this backdrop, the BPTO issued on September 1, 2017, Normative Instruction Nº 074, which came into force on September 12, 2017. The Instruction establishes new procedures regarding the registration of software and use of the electronic form called e-RPC.

Concerning the changes in the registration system, the following can be highlighted: a completely electronic process, implementation of a hash digital summary as a safer way to protect the software, electronic signature of documents and changes in the Official Taxes Schedule for software services.The cryptographic function hash is an algorithm normally used to guarantee the fully integrity of an electronic document. Therefore, a technical expert can prove there was no modification in the document, since it was turned from source code into hash. Previously, the applicant had to send the entire source code of the software; now, the BPTO requires only a hash digital summary of its most relevant and important parts in order to identify the computer program.

The new electronic process basically consists of the issuance of an Official Tax Receipt (“GRU” – the Guia de Recolhimento da União, is a document that was established by the Brazilian Treasury Department and used in order to make payments to organizations, funds, governmental bodies, foundations and other entities) that will generate a Declaration of Veracity. Said Declaration must be completely filled out (note that this form follows previous one, requiring information about the holder to title of the software, the author and the software itself), and is to be submitted along with a power of attorney.

Hence, from now on, all documentation must be electronically signed, being mandatory for obtaining a digital Certificate for a Brazilian applicant. Should the applicant be domiciled abroad, it will be necessary to appoint a qualified attorney, domiciled in Brazil and duly authorized to represent such applicant, including the power to receive judicial summons.Finally, is important to emphasize that BPTO also changed its Official Tax Schedule, reducing its scope of services and standardizing the rates of all software service – except for the item “lifting of confidentiality request”, for which the Official Tax was increased."

Photo at lower left is by Anjuta team and is licensed under GNU Free Documentation License