Brazil's Best Counsel 2020 - Chapter Opening: Patent Litigation

Brazil Adopts the Civil Law System

In addition to the Brazilian Industrial Property Law and the main internatio­nal treaties related to patent matters, the Civil Procedure Code and Cri­minal Procedure Code (Decree Law 3,689/41) shall apply.

Despite all efforts to fight the backlog, the Brazilian Patent and Trademark Office (BPTO) currently takes from 8 to 14 years to analyze a patent application.

In view of the lengthy procedure, se­veral court actions have been filed by patent applicants against the BPTO in the last few years aiming at expediting the patent examination. In most of the cases in which the patent applicant was able to demonstrate an unjustified delay the Federal Court of Appeals of the 2nd Circuit ordered the BPTO to proceed with the examination of the patent application.

Infringement claims shall be filed be­fore the State Courts. As a general rule, the lawsuit has to be filed before the Defendant’s domicile. Nevertheless, if a motion for damages is presented, the action can be started in the place of the infringement (e.g. where the in­fringing products are sold), or before the domicile of the Plaintiff(s).

Preliminary injunctions may be granted as long as substantive evidence is sub­mitted, and the court is convinced of (1) the likelihood of success on the me­rits, and (2) the urgency, to avoid ir­reparable harm. Case law reveals that refraining orders are the most common type of preliminary injunction in Bra­zil. Search and seizure may be granted in cases of more obvious infringement and recall is only granted in extre­me cases, given the risk of irreparable harm to the Defendant.

Usually, lack of infringement and invali­dity are the two most common defenses. However, due to precedents of the Su­perior Court of Justice, the State Courts are no longer entitled to invalidate a pa­tent (a separate nullity action is manda­tory, with the presence of the BPTO as a Defendant, before the Federal Court).

In relation to the proof of infringement, it is recommended to submit expert opinions (considering that discovery is not applicable in Brazil, Plaintiffs and Defendants must submit all evidence along with the initial complaint and defense).

In view of the lack of technical back­ground, judges generally appoint a court expert to proceed with a technical examination. The parties have the right to present queries to be answered by the court expert and indicate technical assis­tants, which is highly recommended. The court expert may schedule meetings with the parties’ technical assistant to discuss the case. Finally, following the presentation of the technical report by the court expert, the parties have the right to request clarifications and pre­sent additional queries. In summary, the technical report is the main basis for the judge’s decision on the merits.

The Brazilian Industrial Property Law provides the following indemnifica­tion criteria: (a) The benefits that the patent infringer would have earned if the violation had not occurred; (b) The benefits that the patent infringer ac­tually earned; (c) The amount due by the patent infringer to the patent hol­der under a hypothetical license agree­ment between the parties. The Plaintiff chooses the most favorable method for calculating compensation.

While infringement actions shall be filed before the state courts, nullity actions must be filed before the federal courts. The BPTO shall be included as a Defen­dant, along with the patent owner. Lack of novelty, inventiveness, clarity and sufficient description are the most com­mon grounds for nullity claims.

The BPTO may agree or disagree with the nullity claim. According to recent case law, when the BPTO agrees with the nullity claim, recognizing that the patent was un­lawfully granted, it becomes an assistant to the Plaintiff, no lon­ger serving as a Defendant.

The court expert examination is a key phase of proceedings. As with the infringement action proceeding, the parties have the right to present queries to be answered by the court appointed expert and indicate technical assistants to follow the technical examination.

The average timeline is 3-7 business days for the analysis of the preliminary injunction request, 2-3 years for the lower court judge’s decision on the merits, 1-2 years for the trial before the Court of Appeal and 3-4 years for the analysis of the case by the Superior Courts.

ABOUT THE AUTHORS

Jacques Labrunie and João Cunha are both senior partners with over 20 years of practice in the intellectual property markets. While Jacques is head of the Patent team, João is the head of the IP litigation team. Vicente Rosenfeld is a partner with over 12 years of experience in the IP market who focuses on litigation mandates.

Jacques Labrunie

E-mail: jlabrunie@glpi.com.br  Phone: +55 11 2149-4500

Vicente Rosenfeld

E-mail: vrosenfeld@glpi.com.br  Phone: +55 11 2149-4500

João Vieira da Cunha

E-mail: joaocunha@glpi.com.br  Phone: +55 11 2149-4500