Within the technology transfer agreements, one of the modalities in which the registration can be done before the INPI are contracts or invoices for technical or scientific assistance services (SAT).
According to information available on the INPI website (www.inpi.gov.br), technical or scientific assistance agreements are agreements that “stipulate the conditions for obtaining techniques, methods of planning and programming, as well as research, studies and projects aimed at the execution or provision of specialized services”.
Notwithstanding the definition above, doubts remain about which kind of the technical services may be registered with the INPI. The Institute tends to observe the following criteria for registration: (i) whether the services have a technical nature; (ii) whether the services are intended for the receiving company’s end activities; (iii) whether the services constitute technology supply.
In 2015, INPI published the Resolution no. 156, expanding the list of services exempted from registration, revoking Resolution no. 54, dated March 18, 2013.
Thus, the list of the activities/services that are not required to be registered with the INPI as they do not characterize technology supply, are:
- Purchasing agency, including logistics services (support for shipment, administrative tasks related to customs clearance);
- Services performed abroad without the presence of technicians from the Brazilian company that do not result in any documents and/or reports (products processing);
- Preventive maintenance services on equipment and/or machinery, of any nature;
- Repair, adjustment, calibration, revision, inspection, recovery services provided on equipment and/or machines, of any nature;
- Supervision of assembly, assembly, disassembly, installation and start-up services provided on equipment and/or machinery, of any nature;
- Homologation and certification of product quality;
- Financial consulting;
- Commercial consulting;
- Legal consulting;
- Consulting for participation in bids;
- Marketing services;
- Remote consulting, without generation of documents;
- Support, maintenance, installation, implementation, integration, deployment, customization, adaptation, certification, migration, configuration, parameterization, translation or localization of computer programs (software);
- End-user training services or other training for computer programs (software);
- License of use of computer programs (software);
- Distribution of computer programs (software);
- Acquisition of a single copy of a computer program (software).
One of the novelties brought on Resolution no. 156/2015 was that the INPI dispensed the registration of technical services related to software, when there is no transfer of the source code. Thus, from the perspective of the Institute, in the event of a simple license, distribution or acquisition of a single copy of a computer program there is no technology supply and, consequently, there is no need to register the agreement before the INPI, with the exception, however, that registration with the INPI is recommended so that it produces effects in relation to third parties.
The amounts to be paid for technical or scientific assistance services must be presented to the INPI broken down into man/hour or man/day for each technician providing the services, with the quantity and individual qualification of the technicians who will provide the services, as well as the number or hours or days worked.
In addition, the agreement or invoice for the provision of technical assistance services must necessarily contain a detailed description of the services to be rendered, the term for the execution of the activities, indicating the start and end date of the services, and the currency of the payment.
Due to the specific nature of technical assistance agreements, particularly regarding remuneration, despite the Decision no. 9/2000 issued by the Federal Revenue Service, it is possible to accrue the royalties prior to the date of protocol of the agreement or invoice before the INPI, however, the deductibility of these amounts retroacts only up to the date of the protocol.
It should be noted that Research and Development (R&D) cost-sharing agreements are still not registered by the INPI pursuant to Normative Act no. 135/97, which revoked Normative Act no. 116/93, which previously allowed the registration of cost-sharing agreements.
Regarding the taxation of technical and scientific assistance services agreements or invoices by the INPI, in addition to CIDE, the ISS-Import, according to LC 116/2003, as well as PIS/COFINS-Import, are owed by the Brazilian company (establishment policy holder or intermediary of the service), according to Law no. 10,865/2004, imposing too heavy a burden on the importation of services.
The Income Tax is also due on the services price, and it is possible to select the party responsible for the tax burden, according to article 725 of the Income Tax Regulation (RIR) – Decree no. 3,000/99.
It is also worth mentioning that as of January 2024, the Transfer Price guidelines (Law No. 14,596/2023) should be adopted for payments of royalties and technical, scientific, administrative, or similar assistance.
In international transactions involving such payments, carried out between related companies, one of the five available methods will be adopted: PIC, PRL, MCL, MLT and CDM. It will be possible to select the most suitable method for the transaction, or use other methods, provided that the alternative methodology produces a result consistent with comparable transactions carried out between unrelated parties.
In summary, even in the face of recent changes to the Transfer Pricing guidelines, the registration and/or recordal of Contracts before INPI will remain of great importance to produce effects before third parties, as well as serving as a comparison parameter for the application of the new Transfer Pricing rules.
Author: Marina Inês Fuzita Karakanian
Dannemann Siemsen
Av. Rodolfo Amoedo, 300 – Barra da Tijuca
22620-350 Rio de Janeiro- RJ
Phone: (21) 2237 8700
E-mail: [email protected]
Av. Brigadeiro Faria Lima, 4.221 – 3º andar
04538-133 São Paulo – SP
Phone: (11) 2155 9500
E-mail: [email protected]
Internet: www.dannemann.com.br