This country-specific Q&A provides an overview of Patent Litigation laws and regulations applicable in Brazil.
What is the forum for the conduct of patent litigation?
The Brazilian system is divided into two branches. Infringement lawsuits are filed on the state courts, and invalidity lawsuits are filed on the federal courts. In most cases, the infringement lawsuit is filed in the Court of the Defendant’s domicile. When the lawsuit has a claim for damages, it may be filed in the Court of the Plaintiff’s domicile or where the damages have occurred.
An invalidity lawsuit against the BPTO could be filed on any federal court where the BPTO has an office (i.e., in Rio de Janeiro or Brasilia). The invalidity lawsuit may also be filed at a Federal Court where the Plaintiff has its headquarters (Art. 52, sole paragraph of the Brazilian Civil Procedure Code – “BCPC”).
Notwithstanding, there are two types of invalidity lawsuit. The first type is the lawsuit that aims to invalidate a granted patent, and the Defendants will be the BPTO and the titleholder. The second type of lawsuit is the one that intends to request the invalidation of an act issued by the BPTO, other than granting a patent. In this case, the Defendant will be solely the BPTO.
Some states, such as São Paulo and Rio de Janeiro, have lower civil courts and chambers at the court of appeals specialized in business law, including industrial property matters (such as patent law). In other states, most of the judges are not familiar with these matters.
On the Federal Court of Rio de Janeiro, there are four specialized courts on the first instance, and two specialized panels on the second instance (appeal level), which are specialized in IP matters. The State Court of Rio de Janeiro has seven business courts with jurisdiction to analyse industrial property matters but no specialized panels at the appellate level. In São Paulo, there are two business courts in the first instance, specialized in IP issues, and two specialized chambers at the appellate level.
These specialized courts judge faster and more precisely than the others, which is crucial to reach better decisions about industrial property matters. On the other hand, specialized courts tend to set their thesis on points of IP law rapidly, which leads the parties to file lawsuits at non-specialized courts, if discussing different thesis is vital to the success of the lawsuit.
It is important to highlight that the courts that are specialized IP matters do not count on judges with a technical background. Hence, in most cases, the judge will appoint an expert who will do the technical analysis before the trial.
What is the typical timeline and form of first instance patent litigation proceedings?
Concerning the first instance, the Plaintiff files the complaint presenting its claims against the other party. After that, the Defendant is summoned to file a reply to the Plaintiff’s arguments in 15 (fifteen) business days – in case of infringement lawsuits – or 60 (sixty) business days – in case of invalidity lawsuits. The second stage is the evidence phase, and it involves the parties preparing and exchanging their production of evidence for trial.
The evidence usually consists of expert reports, witness statements, and selected documents from either side or other sources allowed by the law. The third and final stage consists of final preparation and the trial itself.
Can interim and final decisions in patent cases be appealed?
In Brazil, both decisions, interim and final, can be appealed. Usually, against a final decision, it is possible to appeal, and, at the moment of filing, the effects of the final decision are suspended. However, if there is already a preliminary injunction granted, decision`s effects will be upheld. According to the BCPC, the other party should file the brief of appellee before the case files are sent to the Court of Appeals.
Regarding interim decisions, they can be appealed, but usually said appeal does not suspend the decision`s effects. Nevertheless, it is possible to request the suspension of the appealed decision`s effects based on the risk of irreversible damage and the likelihood of success of the appeal. In this case, the appeal is called an interlocutory appeal, and it is filed directly at the Court of Appeals.
In both scenarios, the appeal must be filed within 15 (fifteen) business days from when the decision was published.
Which acts constitute direct patent infringement?
Under Articles 41 and 42 of the Brazilian Industrial Property Law (“BIPL”), patent infringement is characterized by an act where the invention is a product (including if directly obtained by a patented process or a process) or a process, as well as the use, production, offer for sale, keeping in stock, importation of a product without the consent of the patent holder.
Do the concepts of indirect patent infringement or contributory infringement exist? If, so what are the elements of such forms of infringement?
The patent holder also has the right to prevent third parties from contributing to infringing acts committed by others, i.e., contributory infringement of a patent.
Besides, in the absence of authorization, it is forbidden to supply a component of a patented product, material, or equipment to carry out a patented process, if the final application of the component, material, or equipment leads to the exploitation of the object of a granted patent.
Nonetheless, according to the article 186 of the BIPL, patent infringement can also be committed when the infringement either (i) does not affect all the claims of the patent and (ii) is restricted to the use of means equivalent to the object of the patent (doctrine of equivalents).
How is the scope of protection of patent claims construed?
As provided in article 41 of the BIPL: “The scope of the protection conferred by the patent shall be determined by the content of the claims and interpreted based on the specifications and drawings.” In this sense, although Article 186 of the BIPL states that patent infringement occurs even if the infringement is “limited to the use of means that are equivalent to the claimed matter”, regarding “doctrine of equivalents”, it is relevant to mention that there is no set and widely used test to determine said equivalence.
What are the key defences to patent infringement?
The key defence to patent infringement is proving that the product or process in suit does not read into the patent claims. Besides, a common defence is by alleging the invalidity of the patent and its non-infringement.
Also, it is essential to highlight some exceptions for the protection conferred by the granting of the patent that could be a key defence. The exceptions provided in article 43 of the BIPL are:
acts carried out by unauthorized third parties, privately and without commercial purposes, provided these acts do not harm the economic interests of the titleholder;
acts carried out by unauthorized third parties for experimental purposes, in connection with scientific or technological studies or researches;
preparation of a medicine with a medical prescription for individual cases, carried out by a qualified professional, as well as to the medicine so prepared;
product manufactured by a process or product patent that has been introduced onto the domestic market directly by the titleholder or with his consent;
third parties who, in the case of patents related to living material, use the patented product, without economic intent, as an initial source of variation or propagation to obtain other products; and
third parties who, in case of patents related to living material, use, place in circulation, or market a patented product that has been legally introduced into commerce by the titleholder or the holder of a license, provided that the patented product is not used for commercial multiplication or propagation of the living material in question.
What are the key grounds of patent invalidity?
The requirements for the valid grant of a patent, according to article 8 of the BIPL, are (i) novelty, (ii) non-obviousness, and (iii) industrial application. According to Article 25, the claims shall be substantiated in the specifications, and the subject matter of the patent must be clearly and precisely defined. For that matter, any patent application that does not satisfy those requirements could be subject to an invalidity claim.
Besides, according to article 18 of the BIPL, the following is not patentable:
anything contrary to morals, standards of respectability and public security, order and health;
substances, materials, mixtures, elements or products of any kind, as well as the modification of their physical-chemical properties and the respective processes for obtainment or change, when resulting from the transformation of the atomic nucleus; and
all or part of living beings, except transgenic microorganisms that satisfy the three requirements of patentability—novelty, inventive step and industrial application—provided in Article 8 and are not mere discoveries.
Furthermore, according to article 22 of the BIPL, if a granted patent does not refer to a single inventive concept, it could be invalidated. A patent could also be invalidated when a titleholder amends the claim set to widen it after the beginning of the examination, according to article 32 of the BIPL. This matter is currently being discussed in various court actions in Brazil.
Ultimately, the article BIPL provides that any violation of the IP laws could cause a patent`s invalidity.
How is prior art considered in the context of an invalidity action?
According to article 11 of the BIPL, an invention and a utility model are new if they are not part of state of the art, which consists of everything that became accessible to the public before the filing date of the patent application, by means of a written or oral description, use or by any other means, in Brazil or abroad. Some exceptions are described in Articles 12, 16, and 17.
Can a patentee seek to amend a patent that is in the midst of patent litigation?
In Brazil, a patent application can be modified until the end of the examination process (including appeals). In this sense, once the examination is requested, it is possible to change the claim`s scope, but several restrictions will apply. After that period, only amendments can be made only in cases where there has been a determination by the judge resulting from litigation.
Is some form of patent term extension available?
Under the terms of article 40 of the BIPL, an invention patent shall remain in force for 20 (twenty) years and a utility model patent for 15 (fifteen) years from the date of filing.
However, the sole paragraph brings an exception, where the patentee can have an “extension” in said term if the BPTO takes excessive time for its analysis or in case a lawsuit or force majeure cause is set forth.
This topic is at the moment being discussed before the Superior Court of Justice since there are some arguments related to the fact that this rule could not be applicable when the patentee acted to influence the delay of the BPTO’s examination to be benefitted by said extension.
How are technical matters considered in patent litigation proceedings?
In Brazil, the Court will indicate the expert, or he/she will be jointly appointed by the parties to review the case files and submit a report on the technical issues. Furthermore, the parties may also hire an expert, who will present an opinion about the matter and provide assistance to the court experts.
Usually, the court expert`s report will be submitted in writing, but the Judge can order a hearing on this matter where the experts will testify, and the parties can ask questions about his/her opinion.
Is some form of discovery/disclosure and/or court-mandated evidence seizure/protection (e.g. saisie-contrefaçon) available, either before the commencement of or during patent litigation proceedings?
In Brazil, there is no form of disclosure available. However, based on the parties` request or by his/her initiative, the Judge can order additional information from third parties.
The parties may also request a provisional remedy for the disclosing documents, like a witness deposition or search and seizure of files. In this case, it is necessary to prove that this request is crucial to support their claims.
Are there procedures available which would assist a patentee to determine infringement of a process patent?
In Brazil, when the burden of proof is shifted to the other party, Article 42 of the BIPL states:
A patent confers to its titleholder the right to prevent a third party from, without his consent, producing, using, offering for sale, selling, or importing for these purposes:
a product that is the object of the patent;
a process or a product directly obtained by a patented process.
(1) The patent holder has further assured the right to prevent third parties from contributing others` perpetration of the acts referred to in this Article.
(2) A process patent right referred to in Item II, shall be deemed to have occurred when the possessor or owner does not prove, by a specific judicial ruling, that his product was obtained by a manufacturing process different than the one protected by the patent.
Also, the party may present expert reports analysing the products side-by-side to enhance the chances of success in a preliminary injunction request and, as per the Article 381 of the BPCP, file an autonomous lawsuit for the anticipated production of evidence.
Are there established mechanisms to protect confidential information required to be disclosed/exchanged in the course of patent litigation (e.g. confidentiality clubs)?
In Brazil, according to article 206 of the BIPL, the judge can determine the confidentiality of the case files and the hearings and judgment sessions.
Is there a system of post-grant opposition proceedings? If so, how does this system interact with the patent litigation system?
According to Article 51 of the BIPL, any third party with a legitimate interest or BPTO may file an opposition proceeding within 6 (six) months of the patent`s granting. It is possible to file an invalidity lawsuit before the Federal Court during the examination of opposition proceeding, but the proceeding will be suspended until a final (judicial) decision.
In Brazil, the administrative procedure is different from the patent litigation system. The third-party or BPTO can file an invalidity lawsuit at any time provided the patent is still valid; on the other hand, the applicant can file a declaratory validity lawsuit within 5 (five) years from the issuance of the BPTO`s decision. In addition, there is a possibility to file a lawsuit in both cases requesting a preliminary injunction relief.
As a rule, the patent infringement lawsuit should be filed before the State Court, except if one of the parties is a federal agency.
To what extent are decisions from other fora/jurisdictions relevant or influential, and if so, are there any particularly influential fora/jurisdictions?
As Brazil is a civil law country, the decisions from other jurisdictions, especially from courts that adopt the same system, can be relevant as evidence to convince the courts. However, the court is not obligated to follow them.
According to the BCPC and the Brazilian Federal Constitution, there is a provision of the recognition and enforcement of foreign judgments. Until 2004, this process was Federal Supreme Court`s jurisdiction, and after the Federal Constitutional Amendment no. 45/2004, the Superior Court of Justice became competent to prosecute and adjudicate the acts regarding foreign decision recognition. After the approval, the jurisdiction of the enforcement of foreign judgments lies with the Federal Courts.
How does a court determine whether it has jurisdiction to hear a patent action?
According to article 57 of the BIPL, the patent invalidity lawsuit shall be filed within the Federal Court, and the BPTO, when not the plaintiff, shall participate in them. On the other hand, the patent infringement lawsuit shall be filed before the State Court, except in the case one of the parties is a federal agency.
What are the options for alternative dispute resolution (ADR) in patent cases? Are they commonly used? Are there any mandatory ADR provisions in patent cases?
The options for alternative dispute resolution in patent cases are mediation and arbitration. However, the use of said methods is unusual, and there are no mandatory ADR provisions in patent cases.
What are the key procedural steps that must be satisfied before a patent action can be commenced? Are there any limitation periods for commencing an action?
According to the BIPL, there is no procedural step that must be satisfied before filing a patent infringement lawsuit. Although not mandatory, in some cases, it is recommendable to send a warning letter requesting to the infringer to cease the patent infringement voluntarily to reduce costs.
As a rule, the general limitation period is five years with knowledge of infringement.
Which parties have standing to bring a patent infringement action? Under which circumstances will a patent licensee have standing to bring an action?
The parties that have standing to bring a patent infringement action are:
the patent holder;
the exclusive licensee;
the non-exclusive licensee; and
any third party with procedural interest to protect the patent with powers to defend the patent on the patent holder`s behalf.
It is important to point out that the patent license should grant power to the exclusive or non-exclusive licensee to enforce the patent. Also, we highlight that it is highly recommended that the license agreement must be registered at the BPTO, according to article 62 of the BIPL.
Who has standing to bring an invalidity action against a patent? Is any particular connection to the patentee or patent required?
Similar to the Administrative Nullity Proceedings, according to the article 56 of the BIPL, the BPTO or any third-party with a legitimate interest may file a lawsuit seeking the invalidity of the patent. In this sense, there is no need for a particular connection to the patentee to have standing to bring an invalidity action.
Are interim injunctions available in patent litigation proceedings?
There are interim injunctions available in patent litigation proceedings for both infringement lawsuits and invalidity lawsuits. Concerning the preliminary injunction requests, the Plaintiff must comply with two requirements: (i) present arguments with strong pieces of evidence to convince the judge (fumus boni iuris), and (ii) prove the risk of irreparable harm (periculum in mora).
What final remedies, both monetary and non-monetary, are available for patent infringement? Of these, which are most commonly sought and which are typically ordered?
If a patent infringement lawsuit ends, the final remedies are, as a general rule, a permanent injunction prohibiting the party from exploring the patent and an order to pay indemnification for losses and damages. In some cases, it is also possible to request moral damages – even for companies.
On what basis are damages for patent infringement calculated? Is it possible to obtain additional or exemplary damages?
The damages for patent damages can be calculated in three ways:
per the benefits that the aggrieved party would have made in the violation and occurred;
per the benefits that the patent infringer earned; and
per the remuneration that the patent infringer would have paid to the titleholder of the violated patent throughout the granting of a license would have allowed it to exploit the property lawfully.
In addition, as punitive damages, the judge can also order to collect the products from the market and/or destroy the infringement goods.
How readily are final injunctions granted in patent litigation proceedings?
Due to the patent litigation complexity, the granting of injunctions is rare. For this reason, it is recommended that lawsuits are filed with expert reports as pieces of evidence, in order to make it clear to the Judge, by the opinion of a technical expert, that the violation exists – or not.
Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?
A declaratory relief is advisable before the patent holder files an infringement lawsuit. In this case, the Plaintiff can file declaratory non-infringement proceedings, but this is only possible after an allegation of patent infringement. Moreover, the Plaintiff should prove that an actual or imminent injury is concrete.
What are the costs typically incurred by each party to patent litigation proceedings at first instance? What are the typical costs of an appeal at each appellate level?
The costs are around U$50k to U$2M, depending on the complexity of the case, not considering the court-related fees.
Can the successful party to a patent litigation action recover its costs?
In general, the losing party should reimburse the winning party’s legal costs.
What are the biggest patent litigation growth areas in your jurisdiction in terms of industry sector?
In Brazil, the most prominent patent litigation growth areas have been since the past decade life sciences and technology.
What do you predict will be the most contentious patent litigation issues in your jurisdiction over the next twelve months?
Considering the intense movement of all scientists in the world engaged in vaccine research due to the COVID-19 pandemic, in the future, laboratories may file lawsuits involving vaccine-related patents, as any case involving medical issues.
Which aspects of patent litigation, either substantive or procedural, are most in need of reform in your jurisdiction?
Even though highly qualified, many Brazilian judges are unfamiliar with IP matters. This fact makes their expertise to be proven insufficient in patent cases, which involve complicated technical issues.
What are the biggest challenges and opportunities confronting the international patent system?
Unfortunately, when it comes to patents in Brazil, the BPTO`s backlog needs to be mentioned, as per the countless losses resulting from this slowness patent application analysis. In this sense, although there is a noticeable improvement concerning the backlog, there are still many challenges to overcome.
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