Cross-border patent licensing between Europe and Latin America only works smoothly if the licence is recorded where the patent lives. In Brazil, Spain and Portugal, a patent licence that is not recorded with the industrial property office does not bind third parties, and in Brazil the recording certificate issued by INPI also documents the value, currency and term behind the royalty flow. Brazil changed its recording rules on 12 December 2025. This guide explains what to record, where, and how the choice affects royalties and renewal fees.
Key takeaways
- Brazil, Spain and Portugal all make recorded licences enforceable against third parties; unrecorded licences only bind the parties.
- INPI Brazil applies new ordinances (Portarias 34 and 35 of 24 October 2025) from 12 December 2025, replacing the 2023 rules.
- INPI only records licences of patents or applications filed or granted in Brazil, and the licence term cannot exceed the life of the Brazilian right.
- Brazil’s 2023 transfer pricing law changed the tax treatment of cross-border royalties from 2024; recording and tax planning now need to be checked together.
- Offering a licence of right halves Spanish annuities and cuts Unitary Patent renewal fees by 15%.
Why does recording a patent licence matter?
Recording is the step that turns a private contract into a right that third parties must respect. The rules are close in the three Iberian and Brazilian systems:
- Brazil: a licence contract must be recorded (“averbado”) at INPI to produce effects against third parties, from the date of publication of the recording (Law 9,279/1996, Articles 61 and 62). INPI also registers technology transfer and franchise contracts (Article 211).
- Spain: transfers, licences and other acts affecting patents only take effect against bona fide third parties once recorded in the Patent Register (Law 24/2015, Article 79.2). Licences must be in writing and are presumed non-exclusive, and licensees cannot sublicense unless agreed (Articles 82 and 83).
- Portugal: licences are subject to recording at INPI Portugal and only take effect against third parties after the recording date (Industrial Property Code, Decree-Law 110/2018, Article 29). The licence must be in writing and is presumed non-exclusive (Article 31).
In practice, the risk of not recording is losing the exclusive licensee’s position against a later acquirer of the patent or against an infringer who challenges the licensee’s standing.
What changed in Brazil on 12 December 2025?
INPI’s basic guide to technology contracts flags new rules on recording contracts applying from 12 December 2025. They are two ordinances dated 24 October 2025, both published on INPI’s contracts legislation page:
- Portaria INPI/PR 34/2025 sets the procedure and replaces Portaria 26/2023. INPI records licences and sublicences of patents and patent applications, assignments, know-how supply, technical assistance and franchise contracts.
- Portaria INPI/PR 35/2025 sets the examination guidelines and replaces Portaria 27/2023. Each request must cover a single contract, which may combine several contractual types.
The points that matter most for a foreign licensor under Portaria 34/2025:
| Requirement | Rule |
|---|---|
| Who files | Any party to the contract, through INPI’s electronic form (Art. 4) |
| Documents | Form, proof of fee payment, power of attorney, the contract, and a Portuguese translation if it is in another language (Art. 4) |
| Brazilian rights only | The licensed patents or applications must be granted or filed in Brazil, and the contract must list their numbers (Art. 7) |
| Foreign parties | Must appoint an attorney domiciled in Brazil with powers to represent them and receive service (Art. 10) |
| Term | A licence cannot run longer than the Brazilian right (Art. 11) |
| Timing | Decision within 30 days of publication of the request; 60 days to answer an office action (Art. 8) |
| Certificate | States the parties, object, currency, declared value, contract term and recording term (Art. 13) |
How does recording affect royalties?
For decades, recording at INPI was tied to the tax treatment of royalties paid abroad: Law 8,383/1991 made royalty expenses deductible for contracts recorded at INPI, and Law 4,131/1962 capped deductions as a percentage of revenue. Brazil’s transfer pricing law, Law 14,596/2023, repealed those provisions with effect from 1 January 2024 (or from 2023 for companies that opted in). It also denies deductions for royalties paid to related parties where they produce double non-taxation (Article 44).
Two practical conclusions follow. First, recording still matters for enforceability against third parties and for the documentary trail of value, currency and term that INPI certifies. Second, the tax and foreign exchange side of royalty remittances should be reviewed with Brazilian tax counsel for each structure, especially in intra-group licences. Our recommendation is to plan recording and tax at the same time, before the first invoice is issued.
Cross-border patent licensing and licences of right in Europe
Licensors who are willing to license to anyone can reduce renewal costs:
- Spain: if the patent owner offers licences of right (“licencias de pleno derecho”) by written declaration to the OEPM, annual fees falling due afterwards are halved (Law 24/2015, Article 88).
- Unitary Patent: filing a statement on licences of right with the EPO gives a 15% reduction on Unitary Patent renewal fees. Portugal is among the 18 states covered by the Unitary Patent; Spain is not.
- Brazil: a patent placed on INPI’s licence offer has its annuity halved until the first licence is granted (Law 9,279/1996, Articles 64 and 66), although exclusive licences cannot then be recorded while the offer stands.
Recording itself is inexpensive in Spain: the 2026 OEPM fee for recording a licence is EUR 11.47 per right online (OEPM fee schedule).
What this means for your business
- List the licensed rights per country, with numbers: Brazil will only record rights filed or granted in Brazil.
- Align the licence term with the life of each national patent.
- Prepare certified Portuguese translations and a Brazilian attorney with full powers before signing.
- Record in each country promptly after signature, including Spain and Portugal, not only Brazil.
- Model royalties with tax counsel in both countries before fixing rates and payment terms.
If the licence covers several jurisdictions, our team for patent licensing, assignments and IP contracts can draft one framework and coordinate the local recordings, alongside the patent portfolio it covers.
Where licensors get it wrong
- Signing a global licence that lists no Brazilian numbers. INPI will not record it as a patent licence without identified Brazilian rights.
- Recording only in Brazil. Spanish and Portuguese recordings are just as necessary for effects against third parties.
- Letting the licence outlive the patent. Brazil caps the licence term at the life of the right, and royalties for expired rights invite disputes.
- Assuming old tax rules. The 2023 reform changed how royalties paid abroad are treated; an older template may rest on repealed provisions.
- Forgetting sublicensing consent. In Spain and Portugal a licensee cannot sublicense without authorisation, and INPI asks for the owner’s formal consent.
Frequently asked questions
Is it mandatory to record a patent licence at INPI Brazil?
The contract is valid between the parties without recording, but under Article 62 of Law 9,279/1996 it only produces effects against third parties once recorded at INPI, from publication of the recording. Since 12 December 2025 the procedure follows Portarias INPI/PR 34 and 35 of 24 October 2025.
Can a licence recorded in Brazil cover patents from other countries?
Not for the Brazilian recording. Portaria 34/2025 requires the licensed rights to be filed or granted in Brazil and the contract to list their numbers. A worldwide licence can still be recorded for its Brazilian rights, while the European rights are recorded with the OEPM, INPI Portugal or the relevant registers.
How can a licence reduce patent renewal costs?
Offering licences of right halves Spanish annual fees under Article 88 of the Patents Act, and a statement on licences of right gives a 15% reduction on Unitary Patent renewal fees. In Brazil, patents placed on INPI’s licence offer pay half the annuity until the first licence is granted.
Can IP Global Guard handle licence recordings in Brazil, Spain and Portugal?
Yes. We review or draft the licence, prepare the filings with the OEPM directly when our professionals are entitled to act and otherwise through qualified representatives, and coordinate local agents for INPI Brazil and INPI Portugal, with tax specialists where royalties are involved, from a single point of contact.
How IP Global Guard can help structure your licence
A cross-border licence earns its royalties only if it is enforceable in each country and tax-efficient for both sides. IP Global Guard, the IP services line of META Channel Corporation Limited, coordinates licensing, recordings and portfolio management across more than 25 jurisdictions in Europe, Latin America and Africa, with one strategy and one billing relationship.
Share the draft licence, the list of patents per country and the deal timeline. We will check what must be recorded where, flag the tax questions for your advisers and coordinate the filings. Send us your licensing project.
This article is general information, not legal advice or tax advice, and does not replace an assessment of your specific case.
Sources
- INPI Brazil, Basic guide to technology and franchise contracts (consulted 2026)
- INPI Brazil, Contracts legislation: Portarias INPI/PR 34/2025 and 35/2025 (24 October 2025)
- Brazil, Law 9,279 of 14 May 1996 (Industrial Property Law)
- Brazil, Law 14,596 of 14 June 2023 (transfer pricing)
- BOE, Spanish Patents Act, Law 24/2015 (consolidated text)
- OEPM, Patent and utility model fees 2026
- WIPO Lex, Portugal, Industrial Property Code (Decree-Law 110/2018 of 10 December 2018)
- EPO, Cost of a Unitary Patent
