What Every Foreign IP Rights Holder Must Know.
A critical compliance update on Article 217 of Law No. 9,279/96 and its enforcement consequences for non-resident trademark, patent, and industrial design owners.
Recent federal court decisions confirm that the attorney-of-record filed with the BPTO is fully bound to accept judicial service of process on behalf of foreign IP rights holders — and refusal may constitute bad faith litigation.
"If you own a Brazilian patent, trademark, or industrial design and you are not domiciled in Brazil, you already have a legal representative here — whether you remember appointing them or not."
Brazil's Industrial Property Law (Law No. 9,279/96 — "LPI") requires every foreign IP rights holder to appoint and continuously maintain a qualified attorney domiciled in Brazil, with full powers to represent them before the Brazilian Patent and Trademark Office (BPTO) and in court — including the express power to receive judicial service of process. This is not a one-time filing step. It is a permanent obligation.
THE RULE
What Article 217 Requires — In Plain Terms
"A person domiciled abroad must appoint and maintain a duly qualified attorney domiciled in Brazil, with powers to represent them administratively and judicially, including for the purpose of receiving citations."
— Art. 217, Law No. 9,279/96 (Brazilian Industrial Property Law).
Three points matter most:
It covers all IP rights. Patents, utility models, trademarks, and industrial designs filed with the BPTO are all subject to this rule. If you filed any of them, you appointed an attorney-of-record. That appointment is still legally active.
It never expires. The obligation runs for the entire lifetime of the IP right — not just during prosecution. Gaps caused by a firm's dissolution, an attorney's retirement, or simple neglect mean immediate non-compliance.
Your BPTO attorney can be served on your behalf. By operation of law, the attorney registered with the BPTO holds authority to receive court papers in any litigation touching your IP right — whether or not they have a separate engagement for that specific case.
RECENT CASE LAW
A Court Just Applied This Rule Against a Global Technology Company
RECENT DECISION · 9th FEDERAL COURT, RIO DE JANEIRO · PATENT DISPUTE
In a patent nullity action, a process server attempted to serve a major foreign technology company at the offices of the law firm registered as its attorney-of-record with the BPTO — a firm holding an express power of attorney to receive judicial citations in IP matters.
The firm refused to accept service, telling the court officer it only handled prosecution matters and had no authority before courts.
The court rejected this entirely. The power of attorney on file with the BPTO covered the patent in dispute, and no revocation had ever been filed. Service was held valid. The court also initially imposed a bad faith litigation sanction on the foreign defendant.
The sanction was later lifted — the court found that deliberate intent had not been clearly proved — but the validity of service stood, and the company received a formal judicial warning against similar conduct.
The takeaway is clear: Brazilian courts treat the BPTO power of attorney as automatically conferring authority to receive service in all related litigation — no separate litigation engagement is required, and no internal firm policy to the contrary will be recognized.
AN ADDITIONAL RISK
Spelling Errors in BPTO Publications Can Invalidate Notices
The TRF2 has held that in the digital environment — where parties search BPTO publications electronically — a single misspelled letter in an attorney's name is enough to invalidate an official notification. "Sufficient identification" means the full name, spelled correctly, without abbreviations.
This cuts both ways. A BPTO publication with a typo in your attorney's name may be challenged as void — protecting you if BPTO made the error. But an outdated or incorrect attorney name in your own BPTO file creates serious exposure: notifications you never received may still be held valid against you.
ACTION ITEMS
What You Should Do Now
- Audit your BPTO portfolio. Verify that every registered right has a currently active attorney-of-record with correct credentials and an accurately spelled name on file.
- Check the scope of your power of attorney. It must cover administrative representation before the BPTO, judicial representation, and the express power to receive judicial citations. "Administrative acts only" instruments create litigation gaps.
- Update your records immediately after any attorney change. There is no grace period. Firm dissolution, attorney retirement, or any change in the relationship must be reflected in a new BPTO filing without delay.
- Coordinate your BPTO attorney and litigation counsel. Your BPTO attorney-of-record may be the first to receive court papers. They must have clear protocols to alert your litigation team immediately.
THE HIGHEST RISK SCENARIO
A power of attorney filed years ago with a firm that has since dissolved, changed names, or lost contact with you. The BPTO records still show that firm as your representative. Courts may treat service upon them as valid — or treat the gap in representation as grounds for extinction of your right. Neither outcome is acceptable. Periodic audits are not optional.
BOTTOM LINE
A Permanent Compliance Obligation — Not a Filing Formality
Article 217 operates quietly until it doesn't. Recent case law from Rio de Janeiro's federal courts signals a stricter enforcement phase: courts are treating BPTO-registered attorneys as fully empowered litigation representatives, with real procedural and substantive consequences for foreign rights holders who are caught without proper representation.
We recommend treating this as a standing annual compliance review item. Any change in representation should be executed promptly through proper BPTO channels.
Our firm can assist with a full portfolio audit, updated powers of attorney, and representation protocols to ensure your Brazilian IP rights are always properly covered.
