In addition to the technology supply agreements, the also records agrements or invoices related to technical assistance services (SAT).
With regard to technical assistance, 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) weather the services have a technical nature; (ii) whether the services are intended for the final activity of the receiving company; (iii) whether services constitute a technology transfer.
According to information available on the INPI website (www.inpi.gov.br), agreements or invoices in the form of SAT (Technical Assistance Service), which established the conditions for obtaining techniques, planning and programming methods, as well as research, studies and projects for the performance or supply of specialized services “.
In 2015, INPI published the Resolution No. 156, expanding the list of services exempted or exempted from registration, revoking Resolution No. 54, dated March 18, 2013.
In this sense, the list of the activities/ services that are not required to be registered with the INPI since they do not characterize a technology transfer, are:
I. Purchase agent agreements including logistics services (support for shipment,
administrative tasks related to customs clearance);
II. Services performed abroad without the presence of technicians of a Brazilian company and that do not generate any documents and/or reports (products processing);
III. Preventive maintenance services on equipment and / or any nature
IV. Repair, adjustment, calibration, revision, inspection, recovery of equipment and / or machines of any nature;
V. Supervision of assembly, assembly, disassembly, installation and start-up services operating equipment and/ or machinery;
VI. Homologation and certification of quality of Brazilian products;
VII. Financial consulting;
VIII. Commercial consulting;
IX. Legal consulting;
X. Consulting for participation in bids;
XI. Marketing services;
XII. Remote consulting, without the generation of documents;
XIII. Support, maintenance, installation, implementation, integration,
deployment, customization, adaptation, certification, migration, configuration,
parameterization, translation or localization of computer programs (software);
XIV. End-user training services or other training program computer (software);
XV. License of use of computer program (software);
XVI. Distribution of computer program (software);
XVII. Acquisition of a single copy of a computer program (software).
The INPI dispensed the requirement for registration of technical services related to software when no transfer of the source code occurs/occurred.
The application for registration of the agreement or invoice related to the rendering of technical assistance services must include the description of the services, the term of service, the breakdown of the value in man / hour or man / day, the number and category of technicians involved and the number of hours / days worked to be eligible for INPI approval.
This contractual category includes the same legal observations regarding technology transfer contracts as regards the effects of registration, deadlines and limits of remittance and deductibility. As an exception to the rule, INPI has been accepting retroactivity of payment for technical service provided/ due prior to the date of filing of the request of registration.
Finally, it should be noted that the Research and Development (R&D) apportionment sharing agreements, so-called “cost-sharing” agreements, are not registered by the INPI pursuant to Normative Act 135/97, which revoked Normative Act 116/93, which allowed the registration of cost-sharing agreements.
Regarding the taxation of services 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 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 3.000/99.
Author: Marina Inês Fuzita Karakanian
Rua Marquês de Olinda, 70 – Botafogo
22251-040 Rio de Janeiro- RJ
Phone: +55 (21) 2237 8700
E-mail: [email protected] Indianópolis, 739 – Indianópolis
04063-000 São Paulo – SP
Phone: +55 (11) 2155 9500
E-mail: [email protected]
Patents, trademarks, designs, technology transfer, licensing, franchising, software, trade names, unfair competition.