Patent litigation in Brazil: overview

A Q&A guide to patent litigation in Brazil.

The Q&A gives a high level overview of patent disputes, including how patent infringement is assessed; the conditions for a declaratory judgment; invalidation proceedings; preliminary relief and enforcement options.

To compare answers across multiple jurisdictions visit the patent litigation Country Q&A tool.

This Q&A is part of the global guide to Patent Litigation. For a full list of jurisdictional Q&As visit www.practicallaw.com/patentlitigation-guide.

Márcio Junqueira Leite, Pinheiro Neto Advogados
Contents

Sources of law

1. What are the principal sources of law and regulation relating to patents and patent litigation?

Brazil has a civil law system and its legal framework is composed of thousands of ordinary laws, which are all subject to the provisions of the Federal Constitution of 1988 (Constitution). The protection and enforcement of patents are governed by the Industrial Property Law (Law 9279/96) (IP Law).

Brazil is a party to the:

  • WIPO Paris Convention for the Protection of Industrial Property 1883 (Paris Convention).

  • Patent Cooperation Treaty 1970.

  • WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS).

Brazil enacted the IP Law in 1996, in accordance with the standards required by TRIPS and the provisions of the Paris Convention. The IP Law governs the granting and enforcement of patents.

The Constitution is the main legal source and takes priority over all other sources of law. Federal laws rank below the Constitution (the IP Law is classified as a federal law). To be effective in Brazil, international treaties must be ratified by a legislative decree, which is classified as a federal law. The Brazilian Supreme Court has held that, in the case of a conflict between a federal law and an international treaty, the principle of lex posterior derogat lex priori must be applied, which means that the newer rule will revoke the older rule.

The normative rulings of the Brazilian Industrial Property Office (Instituto Nacional da Propriedade Industrial) (INPI), which is the governmental body in charge of granting patents in Brazil, are relevant to patent litigation. Civil patent proceedings must comply with the Brazilian Civil Procedure Code (Law 5896/73), which will be modified by the new Civil Procedure Code (Law 13.105). The new Code is expected to come into force in March 2016 and brings several modifications to expedite proceedings, such as a limitation on the number of appeals and the imposition of alternative dispute resolution methods (for example, a compulsory mediation procedure before the initiation of civil proceedings).

Criminal patent proceedings must follow the rules of the IP Law and the Criminal Procedure Code (Law Decree 3.689/41).

Brazil also recognises arbitration proceedings, which are governed by the Brazilian Arbitration Law (Law 9307/96), and is signatory of the UN Convention on the Execution and Enforcement of Foreign Arbitral Awards 1958, subject to the recognition of foreign awards by the Superior Court of Justice. As patent infringement cases usually arise from non-contractual relationships, arbitration proceedings are limited, but they are increasing in cases concerning disputes involving patent agreements (see Question 21).

 

Court system

2. In which courts/government bodies are patents enforced?

Patent infringement actions, for both civil and criminal proceedings, are filed before state courts. For civil actions, some states (such as São Paulo and Rio de Janeiro) have courts and chambers at the court of appeals that are specialised in business law, which also includes industrial property matters (such as patent litigation). Otherwise, the majority of judges are not familiar with these matters.

Under the Industrial Property Law (Law 9279/96), patent invalidity actions must be filed before federal courts and must necessarily include the Industrial Property Office (Instituto Nacional da Propriedade Industrial) (INPI) as a defendant. The INPI has no jurisdiction over patent invalidity actions , which are heard exclusively by federal judges. If invalidity is granted, the INPI will publish the cancellation of the patent in its Official Gazette.

 
3. Do the courts/government bodies deal with infringement and invalidity simultaneously or must invalidity actions be brought in separate proceedings?

Infringement actions are filed before state courts, while invalidity actions must be filed before federal courts and include the Industrial Property Office (Instituto Nacional da Propriedade Industrial) (INPI) as a defendant. Any interested party can also bring an administrative invalidity proceeding before the INPI, up to six months after the granting of the patent.

A controversial and current issue is the allegation of patent invalidity as a defence in infringement proceedings. Article 56 of the Industrial Property Law (Law 9279/96) establishes that invalidity can be argued at any time as a defence. Invalidity used to be (and still is) a standard argument in patent infringement actions. However, about three years ago, the Superior Court of Justice held that the invalidity of a patent can only be argued through a specific action, to be filed before a federal court, with the participation of the INPI. Although they are not obliged to follow this interpretation, state courts are applying this reasoning. As a result, it is possible that, in the near future, patent invalidity may no longer be accepted as a defence in infringement actions before state courts.

 
4. Who can represent parties before the court and/or government body?

Only lawyers duly registered before the Brazilian Bar Association can represent parties before the courts. In administrative proceedings before INPI), both lawyers and industrial property agents, also registered before the INPI, can represent parties.

 
5. What is the language of the proceedings? Is there a choice of language?

All proceedings (both court and administrative proceedings) must be carried out in Portuguese, which is Brazil's official language. In arbitration proceedings, the parties can agree on a different language.

 
6. To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts, or other national or international bodies, that have handed down decisions in similar cases?

Brazil has a civil law system, under which the law is the main source for the resolution of disputes. The Brazilian legal system also recognises jurisprudence, analogy, common customs and the general principles of law as sources to resolve disputes. The Brazilian Civil Procedure Code also allows the parties to produce any evidence not forbidden by law.

Therefore, the opinions of other international or foreign courts, or other national or international bodies, that have handed down decisions in similar cases, although not mandatory, can be used to help judges in deciding on patent infringement disputes.

 

Substantive law

7. How is patent infringement assessed?

Under Article 41 of the Industrial Property Law (Law 9279/96) (IP Law), the scope of protection conferred by a patent must be determined by the content of the claims, and interpreted on the basis of the specifications and drawings. The claims must (Article 25, IP Law):

  • Be substantiated in the specifications.

  • Characterise the particulars of the application.

  • Define clearly and precisely the subject matter that is the object of the protection.

Under Article 42 of the IP Law, the patent holder has the right to prevent third parties from, without its consent, producing, using, offering for sale, selling or importing for these purposes a product that is the object of the patent and a process or a product directly obtained from a patented process. The patent holder also has the right to prevent third parties from contributing to infringing acts committed by others.

Therefore, the assessment of patent infringement is made through a technical comparison between the patent claims and the product, process or service put on the market by the alleged infringer.

The crime of patent infringement is considered to have been committed when the infringement either (Article 186, IP Law):

  • Does not affect all the claims of the patent.

  • Is restricted to the use of means equivalent to the object of the patent (doctrine of equivalents).

The courts also recognise the doctrine of equivalents in civil actions, as Article 207 of the IP Law allows the party to pursue applicable civil actions.

 
8. What defences are available to an alleged infringer?

Historically, the defences available to an alleged infringer were:

  • Non-reproduction of the claims of the patent.

  • Invalidity of the patent.

However, Brazilian state courts tend to no longer accept the incidental allegation of invalidity of the patent in infringement actions (see Question 3). Therefore, to raise this argument, the alleged infringer must file a direct invalidity action before the federal court and include the Industrial Property Office as a defendant.

 
9. On what grounds can a patent be invalidated?

Article 46 of the Industrial Property Law (Law 9279/96) (IP Law) broadly provides that a patent granted in violation of the provisions of this law is null, which allows parties to seek cancellation of a patent on numerous grounds. However, the most common grounds are:

  • Non-fulfilment of the legal requirements for granting of a patent, which are (Article 8, IP Law):

    • novelty;

    • non-obviousness; and

    • industrial application.

  • Non-fulfilment of the legal requirements for the granting of a utility model patent. A utility model can be granted for an object of practical use, or part of it, if it (Article 9, IP Law):

    • is susceptible of industrial application;

    • has a new form or arrangement;

    • involves an inventive act; and

    • results in a functionality improvement in its use or manufacture.

  • Subject matters not considered as inventions or utility models, which are:

    • discoveries, scientific theories and mathematical methods;

    • purely abstract concepts;

    • schemes, plans, principles or methods of a commercial, accounting, financial, educational, advertising, lottery or tax nature;

    • literary, architectural, artistic and scientific works or any aesthetic creation;

    • computer programs per se;

    • presentations of information;

    • game rules;

    • operating or surgical techniques and methods, as well as therapeutic or diagnostic methods, for use on the human or animal body; and

    • all or a portion of natural living beings and biological materials, including the genome or germplasm of any natural living being, when found in nature or isolated, and natural biological processes.

  • Non patentable subject matters, including:

    • anything contrary to good morals, the community interest, public security, public order and health;

    • substances, matters, mixtures, elements or products of any kind, as well as the modification of their physical and chemical properties and the respective processes for obtaining or modifying them, that result from nuclear transformation;

    • living beings, in whole or in part, except for transgenic micro-organisms that meet the three patentability requirements (that is, novelty, inventive activity and industrial application) and provided that they do not merely arise from discoveries.

  • Lack of clear and sufficient description so as to enable a person skilled in the art to carry out the invention (Article 24, IP Law).

  • Extension or alteration of the claims or subject matter after the examination request (Article 32, IP Law).

 
10. Can a court only partially invalidate a patent or transform it into a utility model?

Partial invalidation is possible, provided that the remaining claims are patentable (Article 47, Industrial Property Law (Law 9279/96)). Conversion of a patent into a utility model is also possible, subject to the fulfilment of all applicable legal requirements (see Question 9). This conversion can only be requested from federal courts, with the participation of the Industrial Property Office.

 
11. Is it possible to amend patent claims during proceedings?

Under Article 32 of the Industrial Property Law (Law 9279/96) (IP Law), a patent applicant can only amend the claims until the date of the examination request, provided that they refer exclusively to the subject matter initially disclosed in the application. On payment of a specific fee, the applicant or patentee of an invention patent can request a certificate of addition to protect any improvement or development introduced in the subject matter of the invention, even if the improvement does not involve an inventive activity, provided that it shares the same inventive concept as the invention (Article 76, IP Law).

Therefore, it is not possible to amend patent claims if the proceeding is initiated after the examination request or the grant of the patent (which represent the majority of the cases).

 
12. Are there any grounds on which an otherwise valid patent can be deemed unenforceable?

Under Article 43 of the Industrial Property Law (Law 9279/96) (IP Law), the patent is not enforceable against:

  • Private acts of unauthorised third parties for non-profit purposes, provided that they are not detrimental to the economic interests of the patentee.

  • Acts of unauthorised third parties for experimental purposes, related to studies or to scientific or technological research.

  • The preparation of a medicine according to a medical prescription for individual cases which is duly carried out by a qualified professional, and the use of a medicine prepared in this context.

  • A product manufactured under a patent that has been placed on the domestic market directly by the patentee or with its consent (parallel importation).

  • Third parties that, in the case of patents related to living matters, make a non-profit use of the patented product as an initial source of variation or propagation for obtaining other products.

  • Third parties that, in the case of patents related to living matters, use, place in circulation or trade a patented product that has been lawfully introduced on the market by the patentee or its licensee, provided that the patented product is not used for commercial multiplication or propagation of the living matter in question (bolar exception).

In addition, a patent is not enforceable if it is subject to a compulsory licence under a decision imposed by an anti-trust authority, in the case of abuses of a dominant position (Article 68, IP Law).

Although this matter has not been fully settled yet, it is possible to argue that a patent holder cannot enforce its patent against violations that occurred more than five years before the filing of the action. The same would apply to requests for indemnification, for which the statute of limitation is five years. However, if the infringement is continuous, the patent can be enforced even if the infringement started more than five years before the date of filing of the action.

 

Parties to litigation

13. Who can sue for patent infringement?

Patent holder

The patent holder can sue for patent infringement.

Exclusive licensee

An exclusive licensee and a non-exclusive licensee can sue for patent infringement, if the licence agreement grants the licensee powers to enforce the patent. To be enforceable against third parties, a licence agreement must be registered at the Industrial Property Office (Instituto Nacional da Propriedade Industrial) (INPI) (Article 62, Industrial Property Law (Law 9279/96)).

Non-exclusive licensee

See above, Exclusive licensee.

Distributor

Distributors can sue for patent infringements, provided that they have specific powers to enforce the patent under the distribution agreement. It is advisable to register the agreement at the INPI to enforce it against third parties.

Other

Any party that has any procedural interest to defend the patent (such as a commercial representative, franchisee or others) and is formally invested by the patent holder with the powers to defend the patent on its behalf can sue for patent infringement.

 
14. Under what conditions, if any, can an alleged infringer bring proceedings to obtain a declaratory judgment on non-infringement?

Declarations on non-infringement are still controversial in Brazil. Under the Civil Procedure Code, declaratory actions can only relate to documents or the existence (or not) of a legal relationship. The authors have published an article defending the possibility of filing a declaratory action to obtain a judgment of non-infringement, arguing that, if there is no infringement, there will be no legal relation between the patent owner and the alleged infringer. This action would require the production of technical evidence that the product/process of the alleged infringer does not infringe the patent.

 
15. Who can be sued for patent infringement?

Civil infringement proceedings can be brought against any party that violates or contributes to patent infringement (Article 42, Industrial Property Law (Law 9279/96) (IP Law)). In these cases, the judge can order the cessation of the illicit conduct, as well as the payment of an indemnification for the damages caused to the patent holder. In principle, if the violation is committed by a company, its shareholders and directors cannot be sued personally.

In Brazil, the rule is that only individuals can commit crimes. Therefore directors and legal representatives of the companies can be sued personally for either:

  • Patent infringement.

  • Supplying a component of a patented product, or material or equipment for carrying out a patented process, provided that the final application of the component, material or equipment necessarily leads to the exploitation of the subject matter of the patent (Article 185, IP Law).

The mere contribution to patent infringement is not specifically defined as a crime, so a contributor will only be subject to civil actions.

 
16. Is it possible to add or remove parties during litigation?

Parties can be added or removed during litigation either by the judge or by agreement between the other parties.

 

Enforcement options

17. What options are open to a patent holder when seeking to enforce its rights in your jurisdiction?

Civil proceedings

A patent holder can file a civil action for the cessation of patent infringement, as well as payment of an indemnification for damages caused by the infringement. Civil actions also enable the patent holder to obtain preliminary injunctive reliefs to block patent infringement.

Criminal proceedings

The crime of patent infringement is committed by any person who:

  • Manufactures a patented product without the authorisation of the patentee.

  • Uses means or processes covered by an invention patent without authorisation of the patentee.

  • Exports, sells, exhibits, or offers for sale, maintains in stock, hides or receives, with a view to using for economic purposes, a product manufactured in violation of a third party invention or utility model patent, or otherwise obtained by a patented means or process.

  • Imports a product that is the subject matter of an invention or utility model patent or which is otherwise obtained by a means or process patented in Brazil, for economic purposes, and which has not been placed on the foreign markets directly by the patentee or with its consent.

  • Supplies a component of a patented product, or material or equipment for carrying out a patented process, provided that the application of the component, material or equipment necessarily leads to exploitation of the subject matter of the patent.

Criminal proceedings are available and follow a different format than civil actions. Criminal proceedings must be preceded by a preliminary search and seizure measure, conducted by two court experts who prepare an expert report on the infringement. In such cases, the judge appoints a person to act as legal depositary of the products. If the report confirms the infringement, the judge will ratify the technical report and the patent owner can file a private criminal action.

Under the Industrial Property Law (Law 9279/96), the penalties for criminal patent infringement include terms of imprisonment of between one month up to one year, or fines.

If criminal infringement is recognised, the judge can also order the destruction of the products and confiscation in favour of the National Treasury of the equipment used for the production and reproduction of the illicit products. The National Treasury can destroy or donate such equipment to the states, municipalities, Federal District, or public educational, research, or social welfare entities, or can incorporate it to the public assets.

Border measures

Border measures are available, but rare in practice, as establishing patent infringement usually requires an expert technical report. Customs authorities, ex oficio or at the request of an interested party (such as the patent holder), can seize any counterfeit product at the time of clearance. After seizure, the customs authorities can notify the patent holder to file a complaint for judicial seizure and/or destruction of the products.

 
18. Is it compulsory to send a cease and desist letter to an alleged infringer before commencing patent proceedings?

It is not compulsory to send a cease and desist letter before commencing proceedings. However, this is advisable in certain cases in order to convince a judge to grant a preliminary injunction.

Unjustified threats of patent infringement can be characterised as unfair competition and/or as an illicit or false accusation of a crime, for which the accuser will have to indemnify the other party for the moral and material damages caused to its business and reputation. Recently, the Brazilian Competition Authority condemned a pharmaceutical company for sham litigation resulting from an unjustified accusation of patent infringement.

 
19. To what extent are courts willing to grant cross-border or extra-territorial injunctions (preliminary or permanent)?

Brazilian courts only have jurisdiction in Brazil. If the patent infringement occurs in Brazil and outside of Brazil, it will be necessary to send a rogatory letter to the authorities of the other jurisdiction. Therefore, cross-border injunctions are possible, but ineffective in practice.

 
20. To what extent do courts recognise the blocking effect of "torpedo" actions abroad?

The blocking effect of "torpedo" actions is not recognised in Brazil.

 
21. To what extent are arbitration, and alternative dispute resolution (ADR) methods (such as mediation), available to resolve patent disputes?

Arbitration and ADR are available, but not common in patent infringement cases. However, the use of these methods is increasing, especially in disputes between parties that have a contractual relationship and need to continue their common business.

Arbitration

Arbitration cannot be used to assess patent invalidity, which can only be obtained through an action filed at the federal court, with the Industrial Property Office as a defendant.

The number of arbitration proceedings has increased significantly within the past ten years, due to the adoption of the Brazilian Arbitration Law (Law 9307/1996). Under Article 1 of this Law, which limits the scope of issues that can be submitted to arbitration, "persons capable of entering into contracts may settle through arbitration disputes related to freely transferable patrimonial rights". Under this provision, the parties are free to arbitrate issues that have a financial aspect without being subject to any mandatory rules. Criminal and family issues (except the division of assets) are generally referred to as non-arbitrable issues.

ADR

ADR methods are widespread in many sectors in Brazil, particularly in commercial matters.

Conciliation and mediation are the most common ADR methods. The new Code of Civil Procedure imposes the mandatory use of ADR before the initiation of a lawsuit, except if all parties involved agree not to use these methods.

 

Competition and anti-trust

22. Can a patent holder bring proceedings claiming both patent infringement and unfair competition for the same set of facts?

A patent holder can claim both patent infringement and unfair competition for the same set of facts, as the Industrial Property Law (Law 9279/96) (IP Law) considers it an unfair competition practice to use fraudulent means to solicit, for one's own or another person's benefit, a third party clientele. In addition, the aggrieved party is entitled to compensation for the losses and damages resulting from the violation of industrial property rights and unfair competition acts that are not provided for in the IP Law, but which are intended to either (Article 209, IP Law):

  • Disparage a person's reputation or business.

  • Cause confusion between commercial or industrial establishments or service providers, or between products and services placed on the market.

 
23. To what extent can enforcement of a patent expose the patent holder to liability for an anti-trust violation?

In principle, the patent holder is not liable for an anti-trust violation if it only exercises the rights granted by its patent without abusing these rights.

In the case of abuse in the exercise of the exclusive patent rights, the patentee can be subject to a sham litigation action before the Brazilian Competition Authority (Conselho Administrativo de Defesa Econômica) (CADE), which recently condemned a pharmaceutical company for sham litigation resulting from an unjustified accusation of infringement of a patent that had expired.

In 2015, CADE decided a case involving allegations of sham litigation related to standard essential patents. In this judgment, CADE considered that the accusing party had not demonstrated that the patent holder had been asking for abusive prices for licensing its standard essential patents. CADE's decision mentioned that in this specific case, there is no proof that the patentee refused to license, but only that the parties could not reach an agreement regarding the licence price, which is a strictly private matter. However, this matter is still pending in Brazil.

 

Procedure in civil courts

24. What is the format of patent infringement proceedings?

All disputes are decided by a judge. There is no jury for patent infringement proceedings. At second instance, all appeals are decided by three justices.

 
25. What are the rules and practice concerning evidence in patent infringement proceedings in your jurisdiction?

Documents

Documents and affidavits are both used in patent infringement proceedings, especially those issued by technical experts.

Witness evidence

Witness evidence is rarely used in patent infringement cases, as the object of patent disputes is mainly technical. However, in certain cases, when the dispute involves a former employee or a competitor who used fraudulent means, testimonies from witnesses with knowledge of the facts can be helpful for deciding on the dispute.

Expert evidence

The technical expert report, prepared by an engineer, chemist, biologist or other, depending on the subject matter of the patent, is the most important piece of evidence in patent infringement cases. The judge appoints an expert who will examine the product/process of the defendant in light of the patent claims, and conclude, from a technical standpoint, whether this product/process reproduces the claims, in whole or in part. The parties can also appoint technical assistants, who will agree with or challenge the technical expert's report conclusions.

Under the Brazilian Civil Procedure Code, the parties can request the hearing of the court-appointed expert, as well as a debate between this expert and the parties' private experts, although this rarely occurs. Usually, all parties and technical assistants present their opinions in written petitions.

Although the judges are not obliged to follow the expert's report and can decide based on other evidence on the records, in the majority of cases, the technical reports are the base of the decision.

 
26. Is evidence obtained in criminal proceedings admissible in civil proceedings and vice versa?

Evidence obtained in criminal proceedings is admissible in civil proceedings provided that the parties had the opportunity to defend themselves in the earlier proceeding. Brazilian courts have a consolidated jurisprudence recognising that it is not possible to use the technical report produced in preparatory criminal actions (see Question 17, Criminal proceedings) because the defending party cannot file a defence in these proceedings. Therefore, using this report would be a violation of due process rights.

 
27. Is evidence obtained in civil proceedings admissible in other civil proceedings?

Evidence obtained in civil proceedings is admissible in other civil proceedings, as the parties had an opportunity to present a defence in the first proceeding (that is, due process of law was guaranteed).

 
28. To what extent is pre-trial disclosure permitted and what other mechanisms are available for obtaining evidence from an adverse party or third parties?

Pre-trial discovery

Brazilian Law does not allow discovery proceedings. It is possible to request a precautionary measure for the production evidence when there is a risk that evidence will be destroyed. Any type of evidence can be produced in a precautionary proceeding, including the technical expert's report and witnesses' hearings. The requesting party must prove the risk and urgency to produce the evidence. If patent infringement is recognised, the claimant will file a main action, requesting the definitive cessation of the infringement and/or payment of an indemnification.

Other mechanisms

Independent opinions of experts or research institutes can help the judge in issuing injunctions. However, final decisions require the production of a technical expert report, either through a precautionary proceeding (see above, Pre-trial discovery) or during the main proceeding, with the participation of all parties.

 
29. What level of proof is required for establishing infringement or invalidity?

Infringement

The assessment of patent infringement is made through a technical comparison between the patent claims and the product/process or service put on the market by the alleged infringer. Generally, there is infringement if one or more claims are reproduced in whole or in part (see Question 7).

Under the Brazilian Civil Procedure Code, the judge is not obliged to follow the opinion of the court-appointed expert and can decide based on other evidence attached to the records. As the subject matter of patent disputes is technical, the judge cannot decide solely on the basis of his own opinion, but is authorised, for example, to adopt the opinion of one of the technical assistants appointed by the parties.

Invalidity

Article 46 of the Industrial Property Law (Law 9279/96) (IP Law) broadly states that a patent granted in violation of the provisions of this Law is null (see Question 9). Therefore, the party must show, through technical evidence, that the patent violates one or more provisions of the IP Law. As state courts do not admit allegations of patent invalidity as a defence (see Question 3), an invalidity action must be brought separately before the federal courts, with the participation of the Industrial Property Office.

 
30. How long do patent infringement proceedings typically last?

It is difficult to estimate the length of infringement proceedings, but these can generally last:

  • Two to three years at first instance.

  • Two to three years in the Court of Appeals.

  • Two to three years in the Superior Court of Justice, if there is a violation of federal law (generally the Industrial Property Law (Law 9279/96), the Civil Code or the Civil Procedure Code).

As the Brazilian Constitution does not regulate patents directly, patent cases rarely go to the Supreme Court.

Fast-track procedures

Except for preliminary relief proceedings (see Questions 31 to 34), fast-track procedures are rare and can only occur if both parties agree to, for example, exempt the production of a piece of evidence or the proof of a fact, document or petition.

Timetable

Currently, the procedure is still very bureaucratic and can only be changed in very specific situations, subject to the agreement of all parties. However, under the new Civil Procedure Code, the parties will be able to agree on the procedure and timetables, subject to ratification by the judge.

Delay

Under Article 265 of the Brazilian Civil Procedure Code, proceedings can be stayed in the following circumstances:

  • Death or loss of procedural capacity of the party, its legal representative or attorney, which can be changed within 20 days.

  • By agreement of the parties, subject to a maximum stay of six months.

  • Denial of jurisdiction by the judge, chamber or court, as well as suspicion or disqualification of the judge.

  • The decision depends on the judgment of another cause, verification of a certain fact, or production of certain evidence in another court.

  • Reasons of force majeure.

Besides these limited situations, it is common that the parties use delaying strategies by filing several petitions, interlocutory appeals and request for the production of new evidence. These strategies may be qualified as bad faith litigation. A bad faith litigator is a person that (Article 17, Civil Procedure Code):

  • Makes a claim or defence against the law or an incontestable fact.

  • Changes the truth of the facts.

  • Uses the proceedings to achieve an unlawful purpose.

  • Opposes unjustified resistance to the progress of the proceedings.

  • Enters recklessly in any incident or act of procedure.

  • Causes manifestly unfounded incidents.

  • Files an appeal with the intent to delay proceedings.

The judge or court, ex officio or on request, can condemn a bad faith litigant to:

  • Pay a fine not exceeding 1% of the amount of the action.

  • Indemnify the other party for losses suffered, including attorneys' fees and all expenses incurred.

 

Preliminary relief

31. Is preliminary relief available, and if so what measures are available and under what conditions?

Search and preservation orders

Search and seizure measures to confiscate products that infringe patent rights can be taken in both civil and criminal proceedings.

In civil proceedings, the courts can order the destruction of all illegal materials, as well as of matrices, moulds, negatives and other elements used to perpetrate the civil offence, and order the forfeiture of machinery, equipment, and device used for that purpose (or their destruction, if they can only be used for illegal purposes).

In criminal proceedings, in the case of a complaint, the search and seizure is conducted by two court experts who prepare an expert report to declare the infringement. In such cases, the judge appoints a person to act as legal depositary of the products.

If the alleged infringer does not contest the infringement, or if the identity of the infringer cannot be determined, the judge can order the destruction of the products seized. If a criminal decision recognises the infringement, the judge can order the destruction of the products and the seizure in favour of the National Treasury of the equipment used for the production and reproduction of the illicit products.

Additionally, it is possible to file a precautionary action for early production of evidence (see Question 28, Pre-trial discovery).

Injunctions

There are two types of preliminary orders in Brazil:

  • Precautionary measures (medida cautelar).

  • Preliminary injunctions (antecipação de tutela).

A precautionary measure is granted by the judge to protect a right that must be fully confirmed by a final decision. The requirements to obtain a precautionary measure are:

  • The appearance of the existence of the right (fumus boni iuris).

  • Urgency (periculum in mora).

Within 30 days from the granting of the precautionary measure, the claimant must start main proceedings to confirm the measure.

To obtain a preliminary injunction, the claimant must start main proceedings and request the judge to anticipate some parts of the final decision. The requirements for a preliminary injunction are:

  • Unequivocal evidence of the likelihood of the rights invoked.

  • Grounded fear of irreparable, or hardly repairable, injury (urgency).

The injunction requested cannot be irreversible.

Although there were some discussions when preliminary injunctions where introduced into the Brazilian civil procedure system (in the 1990s), case law has recognised that the requirements for both types of preliminary measures are the same. The decision to request one or the other will depend on the strategy of the party.

Preliminary injunctions can be granted without hearing the other party when there is a real risk that this party can frustrate the hearing, or in cases where urgency is so great that it is not possible to wait for a hearing of the other party. The judge has discretion to require the posting of a bond or another fiduciary guarantee as a condition for the injunction.

In patent invalidity actions, it is also possible to request a preliminary injunction to stay the effects of the patent until the issuance of a final decision. However, injunctions are rarely granted in these actions, as the existence of the right relies on the patent owner, who followed all administrative procedure for granting of the patent, which was granted by by INPI. Therefore, the patent is prima facie valid (fumus boni iuris).

Brazilian courts only have jurisdiction in Brazil. Therefore, if the patent infringement occurs in Brazil, a preliminary injunction will only take effect in Brazil. If the patent infringement occurs in Brazil and outside of Brazil, it will be necessary to send a rogatory letter to the authorities of the other jurisdiction.

 
32. Can a protective writ be filed at the court at which an ex parte application may be filed against that defendant?

Any person that wishes to preserve its rights or liabilities or formally declare its position can do so in a written petition to the judge, requiring that the counterparty be summoned.

There is still a discussion in Brazil on the possibility of filing declaratory actions of non-infringement (see Question 14).

 
33. What is the format/procedure of preliminary injunction proceedings?

General

See Question 31, Injunctions.

Level of proof

See Question 31, Injunctions.

In patent infringement cases, the appearance of the existence of the right (fumus boni iuris) is usually evidenced by the copy of the letter patent, together with a technical comparison between the patent claims and the product/process put into the market by the alleged infringer. An independent technical report will assist the judge in deciding on whether to grant the injunction.

Evidence

The aim of preliminary proceedings is to secure the effectiveness of the claim in the main proceedings. Preliminary injunction proceedings are dependent on the main proceedings and all types of evidence can be produced, as necessary for the granting of the measure.

Patent validity

See Question 31, Injunctions.

Length of proceedings

The length of preliminary proceedings depends on the workload and method of work of each judge. However, injunction requests are decided quickly, generally within one week.

 
34. If a preliminary injunction is granted and the main infringement action is finally lost, can the defendant claim damages for the unjustified preliminary injunction?

If the main infringement action is finally lost, the defeated party must reimburse and repair damages deriving from any preliminary injunction, regardless of fault or wilful misconduct. The liability of the claimant in these cases is objective.

Damages will be calculated according to the extent of losses, and the economic capacity of both the defeated and winning party.

The bond or other fiduciary guarantee required by the judge as a condition for the injunction (if any) will also be used for the indemnification.

 

Final remedies

35. What remedies are available against a patent infringer?

A patent holder who is aggrieved by an infringement of its patent can file a lawsuit and seek, among others:

  • An injunction for the cessation of the infringement by the infringing party.

  • Removal of the products from the market.

  • Payment of indemnification.

Permanent injunction

At the end of the proceedings, if the judge considers that the evidence produced leads to the conclusion of patent infringement, he can grant a permanent injunction prohibiting the defendant from carrying out infringing acts and condemn him to pay an indemnification. The injunction must refer specifically to the acts of infringement, but can also affect suppliers and distributors of the infringing product.

The effects of an injunction are limited to the defendant(s) in the lawsuit and cannot be effective against third parties. Brazilian courts only have jurisdiction in Brazil. Therefore, an injunction only has effect on the national territory, but can be extended to other jurisdictions through rogatory letters (see Question 19).

Monetary remedies

Under the Industrial Property Law (Law 9279/96), indemnification for loss of profits can be calculated on three different bases:

  • The benefits that the patent infringer would have earned if the violation had not occurred.

  • The benefits that the patent infringer actually earned.

  • The amount due by the patent infringer to the patent holder under a hypothetical licence agreement between the parties.

The claimant can choose the most favourable method for calculating compensation.

The claimant can request indemnification for damages suffered, which must be determined by the judge according to the extent of the damages and the economic capacity of both the defeated and winning party.

If there is an agreement between the parties, it is advisable to include a clause providing for a fine in the case of violation, and which can be enforced in court in the event of breach.

It is also possible to request moral damages, but these are rarely granted in patent infringement cases and are only available if the reputation of the claimant has been affected by the infringement.

There are no punitive damages in Brazil.

Delivery up or destruction of infringing goods

Judges can order the destruction of all illegal materials, as well as matrices, moulds, negatives and other elements used to perpetrate the violation, and order the seizure of machinery, equipment and device used for that purpose (or their destruction, if they can only be used for illegal purposes).

Publication of the decision

All decisions only become enforceable after their publication in the Official Gazette, which usually occurs a few days after the decision is rendered. Publication in other media, such as newspapers, is rare in patent cases.

Recall order

In Brazil, the judge can decide that the infringing party must withdraw from the market all products, moulds and machines (among others) that unduly reproduce the patent. The infringing party must withdraw these items personally.

A recall order can be issued as a preliminary injunction or as a final decision. Judges can impose a daily fine or other supporting measures in the event of non-compliance with the order.

Declaration of infringement and validity

The declaration of infringement is made in the final decision, and is valid from publication of the decision. If an appeal is filed and its staying effect is granted, the effects of the decisions are stayed until the decision becomes final and unappealable.

 

Appeal procedure

36. What avenues of appeal are available for a defeated party and under what conditions?

There are several routes of appeal under Brazilian law. An appeal can have as its object the reform, invalidation, clarification or integration of a decision.

Generally, appeals have a staying effect. There are some exceptions, such as appeals against decisions on preliminary injunctions or precautionary measures. These exceptions are set out in Article 520, items I to VII of the Brazilian Civil Procedure Code.

The main object of an appeal is to reform or invalidate a first instance decision. It is possible to raise all the arguments on the merits already raised at first instance. The appeal will be heard by three justices who will each render a decision. The final decision is adopted by a majority vote. The most common appeals are:

  • Interlocutory appeals. These are filed against decisions that do not close the proceeding, but decide on incidental issues (interlocutory decisions), such as preliminary injunctions. The reporting justice can stay the effects of the first instance decision until a final decision at the interlocutory appeal if the appellant proves that the interlocutory decision could cause him serious damages.

  • Motions for clarification. These are filed against any decision rendered during the lawsuit, in any instance. The motion for clarification must have as its object the clarification of any addition, omission, lack of clarity or contradiction in the contested decision. The motion is heard by the same judge/court that rendered the challenged decision.

  • Appeals against a final first instance decision. These seek to overturn the final first instance decision and refer to the Court of Appeals all the issues discussed at first instance.

In principle, appeals against second instance decisions (special appeals) can be directed to the Superior Court of Justice (STJ). However, special appeals are only admitted when the following specific requirements are met:

  • Clear violation of federal law provisions.

  • Different interpretations of the same issue by second instance courts.

If a special appeal is admitted, it will take two more years for the STJ to issue a decision.

It is not possible to predict how long any type of appeal will last, but interlocutory appeals and motions for clarification are usually judged within six months, while appeals against first instance final decisions have an average duration of two to three years.

 

Litigation costs

37. What level of cost should a party expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and appeal proceedings?

Apart from the fees privately agreed between a party and its lawyer, the official fee for filing a lawsuit varies from state to state and is around 1% of the total value of the lawsuit, as indicated on the claimant's complaint. There are minimum and maximum caps on this fee, independent of the percentage.

In addition, there is a mandatory loss of suit fee, which is fixed by the judge and range between 10% and 20% of the total value indicated in the judgment. This fee is payable to the winning party's lawyer.

There are additional non-regular expenses, for example:

  • Fine for bad faith litigation.

  • Remuneration of technical experts.

Some of these expenses must be paid in advance.

Attorneys' fees and costs are recoverable from the losing party, at least in part. The judge will fix the sums due by the defeated party in the final decision.

 

Reform

38. What are the important developing and emerging trends in your country's patent law?

Brazil is reviewing its industrial policy with measures to:

  • Increase interest in patenting technology.

  • Increase investments in innovation.

  • Modernise and make the Industrial Property Office more efficient.

The new Brazilian Civil Procedure Code has been approved in early 2015 and is expected to enter into force in March 2016. The new Code introduces changes, especially regarding deadlines, appeals and preliminary injunctions. However, there are currently some discussions about the new Code, which may delay its entry into force and even modify some of the provisions that have already been approved.

The Bill of Law 5402/2013 amends provisions of the Brazilian Industrial Property Law (Law 9279/96) regarding pharmaceutical patents. In summary, the Bill aims to:

  • Abolish the guarantee of a minimum term for patent protection.

  • Prohibit polymorphs and second use patents.

  • Change the patentability requirements.

  • Facilitate the grant of compulsory licences.

  • Extend the powers of the Brazilian Sanitary Agency (Agência Nacional de Vigilância Sanitária).

The Bill was severely criticised by the intellectual property associations and, if approved, will represent a severe setback for patent protection and investment in innovation in Brazil.

 

Online resources

Industrial Property Office (Instituto Nacional da Propriedade Industrial) (INPI)

W www.inpi.gov.br

Description. The INPI is the entity responsible for the registration of industrial property rights and the elaboration of all regulatory standards of industrial property in Brazil. The website contains official information, status of registrations and applicable legislation.

Brazilian Association of Industrial Property Agents (Associação Brasileira dos Agentes da Propriedade Industrial) (ABAPI)

W http://abapi.org.br

Description. The ABAPI is the entity that represents industrial property agents.

Brazilian Intellectual Property Association (Associação Brasileira de Propriedade Intelectual) (ABPI)

W http://abpi.org.br/english/defaulteng.asp?linguagem=English

Description. The ABPI is an organisation dedicated to the study of intellectual property.

São Paulo Association of Intellectual Property (Associação Paulista da Propriedade Intelectual) (ASPI)

W www.aspi.org.br/en-us/aspicalendar.aspx

Description. The ASPI aims to spread knowledge related to intellectual property and to safeguard rights and duties of professionals.



Contributor profile

Márcio Junqueira Leite, Counsel

Pinheiro Neto Advogados

T 55 11 3247 8805
F 55 11 3247 8600
E mjunqueira@pn.com.br
W www.pinheironeto.com.br

Professional qualifications. Brazil, Lawyer

Areas of practice. Intellectual property; arbitration; commercial litigation; advertisement/entertainment law; copyright/software; information technology; technology transfer, contracts and business operations involving IP rights; litigation involving press, image and other personal rights.

Non-professional qualifications. LLB, São Paulo Catholic University, 2000; Postgraduate Degree in Civil Procedure, São Paulo Catholic University, 2004; Master's Degree in Commercial Law, University of São Paulo Law School, 2011; Postgraduate Degree in Entertainment Law, 2012

Languages. Portuguese, English, Spanish

Professional associations/memberships.

  • Specialist, mediator and arbitrator-mediator of the Dispute Resolution Chamber of the Brazilian Association of Intellectual Property (Associação Brasileira de Propriedade Intelectual) (ABPI) and the Brazilian Franchise Association.
  • Member of the ABPI.
  • Member of the Brazilian Association of Industrial Property Agents (Associação Brasileira dos Agentes da Propriedade Industrial) (ABAPI).
  • Member of the São Paulo Association of Intellectual Property (Associação Paulista da Propriedade Intelectual) (ASPI).
  • Member of the International Trademark Association (INTA).

Publications.

  • Second Use Patents in Brazil, Almedina, 2015 (author).
  • Chapters of Civil Procedure in Intellectual Property, Lumen Juris, 2009 (co-author).
  • Several articles on IP rights in Brazil.

{ "siteName" : "PLC", "objType" : "PLC_Doc_C", "objID" : "1248290601484", "objName" : "Patent litigation in Brazil overview", "userID" : "2", "objUrl" : "http://us.practicallaw.com/cs/Satellite/us/resource/0-621-2618?null", "pageType" : "Resource", "academicUserID" : "", "contentAccessed" : "true", "analyticsPermCookie" : "2-62dceab2:15afbc7b995:5479", "analyticsSessionCookie" : "2-62dceab2:15afbc7b995:547a", "statisticSensorPath" : "http://analytics.practicallaw.com/sensor/statistic" }