This country-specific Q&A provides an overview to Patent Litigation laws and regulations that may occur in Brazil.
What is the forum for the conduct of patent litigation?
Brazil adopts a bifurcated system. The federal courts decide invalidity cases and the state courts hear infringement. The system shares similarities to the German bifurcated process.
Some states have specialized IP courts. Rio de Janeiro is the only state that has specialized federal district courts as well as federal appellate chambers to hear IP invalidity cases.
Invalidity can be raised as a matter of defense (art. 56, paragraph first, of the Patent Statute #9,279/96). However, the Superior Court of Justice has split decisions over whether the state courts can accept the invalidity defense.
Validity lawsuits have the BRPTO (INPI) as a mandatory party, named as co-defendant together with the patent owner. Venue is established at the patent owner´s principal place of business or at the INPI’s headquarters (Rio de Janeiro or Brasilia, the legal venue established by Statute #5,648/70). If the patent owner is a foreign company, art. 217 of the Statute #9,279/96 and unsettled case law, establishes that the lawsuit can be filed in the office location of the attorney at law with legal power to represent the patent owner.
Patent infringement actions are filed before state courts. Some states, such as São Paulo and Rio de Janeiro, have district courts specialized in commercial disputes, including patent litigation matters. São Paulo has specialized chambers at both the first instance and the appellate level. São Paulo and Rio de Janeiro are the largest forum with patent litigation in Brazil.
What is the typical timeline and form of first instance patent litigation proceedings?
Infringement proceedings start when a patent owner files a lawsuit before a state court. The complaint must be filed containing strong grounds for infringement. In general, the parties also attach technical opinions prepared by experts from Brazilian and foreign universities in order to raise the chances of obtaining a preliminary injunction. Infringement arguments and claim construction must be included.
Regarding the validity of a challenged patent, the challenger can file an invalidity lawsuit against the patent owner and the BRPTO before a federal district court at any time during the term of the patent. In addition, art. 51 of the Patent Statute provides the possibility of a post-grant opposition procedure. The post-grant opposition can be filed by the BRPTO or by a third party until six months after the granting of the patent.
Disputes usually last between two to four years at first instance, depending on the court’s productivity and the parties’ will to litigate. Damages assessment is decided after the liability decision.
Can interim and final decisions in patent cases be appealed?
Both interim and final decisions can be appealed to the appellate courts.
Regarding final decisions, all the arguments, facts, evidence analysed and decided by the trial court can be reviewed by the appellate court. There is no deference doctrine applicable by the Appellate Court to the Trial Court decision. Appeals can be decided again.
Final decisions by the appellate courts can be challenged (certioriari type of process) before the Superior Court of Justice (non-constitutional grounds) and before the Supreme Court (constitutional grounds).
Which acts constitute direct patent infringement?
According to the art. 42 of the Statute #9,279/96, the patent holder has the right to prevent third parties from manufacturing, using, offering for sale, selling or importing for such purposes without their consent.
Do the concepts of indirect patent infringement or contributory infringement exist? If, so what are the elements of such forms of infringement?
According to the art. 185 of the Statute #9,279/96, parts of products are protected, whenever those parts only suit the patented product or only have the purpose to perform the patented method. Under art. 42, paragraph 1, the patentee is further guaranteed the right to prevent third parties from contributing to the infringing acts.
How is the scope of protection of patent claims construed?
Under the art. 41 of the Statute #9,279/96, the extension of the protection conferred by a patent will be determined by the content of the claims, interpreted in the light of the specification and drawings.
The Patent Statute (art. 186) also provides the possibility of a doctrine of equivalents. However, there is no criteria for applying this doctrine and there is no precedent establishing a standard for applying it.
What are the key defences to patent infringement?
The key defenses available are the invalidity of the patent and non-infringement.
What are the key grounds of patent invalidity?
The most common grounds of patent invalidity are obviousness, eligibility, lack of written description and definiteness.
How is prior art considered in the context of an invalidity action?
According to art. 11 of the Patent Statute, inventions and utility models are considered new when they do not constitute part of the existing state of art. Single prior art must be used to challenge novelty. For obviousness, a combination of prior arts can be used.
A patent can be declared null when granted contrary from the provisions of the Patent Statute, for example lacking novelty.
Can a patentee seek to amend a patent that is in the midst of patent litigation?
Yes. The judge might establish the amendment of a patent during litigation.
Is some form of patent term extension available?
PTE and PTA are not available in Brazil. However, the general patent term is 20 years from the filing date or 10 years from the granting date, whichever is longer.
How are technical matters considered in patent litigation proceedings?
In view of the lack of technical background, judges hearing infringement and validity matters rely heavily on the technical report issued by an unbiased court-appointed expert. The parties can appoint technical assistants to interface and to provide technical information to the court-appointed expert.
The parties can also file technical opinions prepared by experts from Brazilian and foreign universities in order to raise the chances of obtaining, for example, a preliminary injunction.
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?
There is no discovery in Brazil. However, parties can ask the court to issue orders to parties to present specific evidence.
Are there procedures available which would assist a patentee to determine infringement of a process patent?
The Statute #9,296/96 (art. 42, paragraph second) provides for the possibility of reversal of the burden of proof, whenever the issue concerns a potential infringement of a method claim, which includes products that are obtained directly by the patented method.
The accused party will need to prove that the process used does not infringe the method claim and that the product being commercialized was not obtained by the claimed method.
Is there a system of post-grant opposition proceedings? If so, how does this system interact with the patent litigation system?
The Patent Statute regulates post-grant review proceedings: any third party with legitimate interest or the BRPTO can challenge a patent within six months from grant. If the challenge is succeeded, the patent is invalidated with retroactive effect to the date of filling.
The patent litigation system is completely independent of the administrative procedure and the parties can always consider an invalidity lawsuit or a declaratory validity lawsuit. Brazilian federal courts will hear such cases even when post-grant review proceedings are pending before the BRPTO, and the possibility of obtaining preliminary injunctive relief staying the post-grant review proceedings makes this strategy particularly useful, especially concerning sensitive technology.
To what extent are decisions from other fora/jurisdictions relevant or influential, and if so, are there any particularly influential fora/jurisdictions?
These decisions can be persuasive. Decisions from the EPO or the PTAB are often used as evidence to convince the courts.
How does a court determine whether it has jurisdiction to hear a patent action?
As discussed above, the Federal Court and the appropriate provincial courts can hear patent infringement actions, but only in respect of Canadian patents, and not foreign patents. Additionally, the Federal Court has the exclusive jurisdiction to hear impeachment proceedings with respect to Canadian patents and expunge said patents from the register. The provincial courts can only declare a patent to be invalid as between the parties to the litigation.
Due to the principles of comity, anti-suit injunctions are available but are extremely rare. For example, they are issued only where a foreign court has assumed jurisdiction on a basis that is inconsistent with Canada’s rules of private international law relating to forum non conveniens such that it results in injustice to a litigant or potential litigant in the Canadian courts.
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?
There is no mandatory ADR in patent cases and it is not commonly used in Brazil.
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?
Lawsuit can be filed as soon as you learn about infringement activities. Five year limitation might be applicable depending on the case.
Which parties have standing to bring a patent infringement action? Under which circumstances will a patent licensee have standing to bring an action?
(i) The patent holder, (ii) the exclusive licensee or a non-exclusive licensee if the license agreement grants the licensee power to enforce the patent; (iii) any party with procedural interest to defend the patent with powers to defend it on its behalf.
Who has standing to bring an invalidity action against a patent? Is any particular connection to the patentee or patent required?
Anyone with a proven legitimate interest, including the Brazilian PTO. For instance, in 2013, the BRPTO filed 37 lawsuits seeking the invalidity of mailbox patents that were granted, according to the BRPTO, with a wrong patent term.
Are interim injunctions available in patent litigation proceedings?
Yes, they are widely available and almost always requested by the plaintiffs, both in infringement lawsuits and in invalidity lawsuits. But the probability of getting a preliminary injunction granted is higher in an infringement lawsuit, although not very common.
The requirements for the granting of an interim injunction are (i) strong evidence that convinces the judge of the likelihood of the plaintiff’s claims, and (ii) the risk of irreparable harm to the party’s right.
It is up to the judge’s discretion to decide on whether a bond is necessary in the case. Normally, when the party awarded with an interim injunction is a company with assets in Brazil, the Judge does not require the posting of a bond.
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?
As a rule, the final remedies are permanent injunction prohibiting infringing acts. Another remedy is the indemnification for losses and damages and it is possible to request moral damages.
On what basis are damages for patent infringement calculated? Is it possible to obtain additional or exemplary damages?
Damages can be awarded taking into consideration the benefits that could be earned by the injured party if the infringement had not happened. In addition, all the benefits earned by the infringer in a reasonable royalty are statutory means to establish damages. Lost profits are determined by the most favourable criteria to the patent owner.
How readily are final injunctions granted in patent litigation proceedings?
Permanent injunctions are mandatory upon the finding of infringement.
Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?
The filing of a declaration of non-infringement lawsuit is possible. The plaintiff needs to show evidence of the likelihood that the patent is going to be used against its activities if they want to get a preliminary injunction.
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?
Depends on the complexity of the case. From 100k USD to 2MI USD.
Can the successful party to a patent litigation action recover its costs?
The winner can recover part of its costs, such as the fees related to the court-appointed expert report.
What are the biggest patent litigation growth areas in your jurisdiction in terms of industry sector?
Pharmaceutical Industry and Telecom Industry.
What do you predict will be the most contentious patent litigation issues in your jurisdiction over the next twelve months?
Standard Essential patents and monoclonal antibodies cases.
Which aspects of patent litigation, either substantive or procedural, are most in need of reform in your jurisdiction?
The post-grant opposition system.
What are the biggest challenges and opportunities confronting the international patent system?
Reducing the BRPTO backlog. The possibility of “anti-antisuit” injunctions.