Brazil's Best Counsel 2021 - Chapter Opening - Patent Litigation

Posted Tuesday, November 24th 2020
Brazil's Best Counsel 2021 - Chapter Opening - Patent Litigation

Patent Litigation in Brazil

Brazil adopts a dual system for patent litigation, where, similarly to the German system, infringement and validity are addressed at different courts. Therefore, while invalidity actions are brought before the Federal Courts, patent infringement actions are filed at the State Courts.

Despite the small number of patent infringement court actions when compared to Europe or the United States, the enforcement of patents can be very efficient in Brazil. This is because preliminary injunctions are accessible and the thresholds for obtaining injunctive relieves are lower than in other countries. Basically, plaintiffs must submit pieces of evidence demonstrating the likelihood of prevailing on the merits, the risk of irreparable harm if the injunction is not granted soon; and the favorable balance of hardships –  if the harm that will be suffered by the plaintiff, if an injunction is not granted, is greater than the harm that will be imposed upon the defendant by the granting of an injunction.

Ex parte preliminary injunctions are also available, which means that injunctive reliefs may be granted even before defendants are served with summons. Therefore, there is no need to give notice to the defendant, and the parties can have ex parte in-chamber meetings with judges.

Moreover, Brazil is well known for its independent judicial system in which judges do their best to enforce the law. In addition, the most economically relevant States, such as São Paulo and Rio de Janeiro, have courts specialized in intellectual property matters. With many infringement actions filed by foreign entities against local companies, Brazilian courts show no tendency to rule in favor of locals. The chances of prevailing are essentially the same regardless of the plaintiff’s nationality.

A patent owner may argue direct infringement – manufacturing, using, offering for sale, selling or importing for such purposes without consent a product covered by patent –, or indirect infringement – contributing to infringing acts, and manufacturing, using, offering for sale, selling or importing a product directly obtained by a patented method. The doctrine of equivalents is statutory and, in cases involving method patents, there is a reversal of the burden of proof, as such the defendant must prove use of a method distinct from the patented one.

As most Brazilian judges do not have a technical background, courts appoint independent technical experts and their opinions usually ground the decisions on the merits.

In patent litigation, the final rulings can order permanent injunctions prohibiting the infringing acts and recovery of damages. The law provides three options to calculate damages, namely, the benefits the plaintiff would have obtained if the violation had not occurred, the benefits obtained by the infringer, or the royalties the infringer would have paid for a license allowing the exploitation of the invention. The plaintiff can choose any one of these criteria.

All these factors combined contribute to a fertile environment for patent infringement actions in Brazil, making Brazil an attractive jurisdiction to enforce patent rights.

 

ABOUT THE AUTHOR

Eduardo Da Gama Camara Junior is a partner at Dannemann Siemsen and specializes in patent prosecution and litigation. Mr. Camara Junior has been at the firm since 1995 and holds degrees in Mechanical Engineering and Law and Civil Procedural Law from Pontifícia Universidade Católica do Rio de Janeiro (PUC-Rio) as well as a postgraduate degree in Intellectual Property from Franklin Pierce Law Center in New Hampshire/USA. He has been involved in several key patent litigation cases involving the pharmaceutical industry and standard-essential patent issues (SEP) in Brazil.