”Before anything else, preparation is the key to success.Alexander Graham Bell
Brazil is a civil law country. The substantive regulation relating to patents is contained in Federal Law #9,279 of May 14, 1996 (Brazilian Industrial Property Law or “Patent Statute”), which derived from the incorporation of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) into the Brazilian legal system, under Decree #1,355 of 1994.
Other legal provisions also regulate the matter, such as the Federal Constitution, which prevails over all other sources of law, as well as the normative rulings of the Brazilian Patent and Trademark Office (BPTO).
On the international level, and in addition to TRIPS, Brazil is a party to the major agreements relating to intellectual property in general and to patents in particular, such as: (i) the WIPO Paris Convention for the Protection of Industrial Property of March 20, 1883; and (ii) the Washington Patent Cooperation Treaty of June 19, 1970.
Lastly, it is important to mention patent case law, common customs and general principles of law that can also be taken into consideration to resolve disputes. Patent case law comes principally from state and federal courts, but it is important to note that such cases are not seen as binding legal precedent.
A company, any other legal entities or the inventor (a natural person) may apply for the ownership of a patent before the BPTO, which is the institution responsible for granting patents in Brazil.
In addition to the author of an invention, Article 6, §2, of Law #9,279/96 states that its heirs or successors, as well as any assignee or whoever the law or a work or service contract determines to be the owner, may register a patent.
When a patent application is granted, the owner is entitled to the following rights:
- Right of property: under Article 6 of Law #9,279/96, the author of an invention is assured the right to obtain a patent that guarantees him the property, under the terms established by the industrial property law, i.e., the right to exploit the patent exclusively.
- Right of exclusion: pursuant to Article 42 of Law #9,279/96, a patent confers on its proprietor the right to prevent third parties from manufacturing, using, offering for sale, selling or importing for such purposes without his consent: (i) a product that is the subject of a patent; (ii) a process, or product directly obtained through a patented process. The patentee is further guaranteed the right to prevent third parties from contributing to the practice by other parties of such specified acts.
- Additionally, for a patented process, the corresponding rights will be violated when the owner of a product fails to prove, through a specific judicial ruling, that it was obtained by a manufacturing process different from the patented one. Article 43 of Law #9,279/96 provides several limitations to the right to exclude others.
- Right to obtain compensation: as set forth in Article 44 of Law #9,279/96, a patentee is guaranteed the right to obtain compensation for the unauthorized exploitation of the subject matter of the patent, including exploitation that occurred between the date of publication of the application and that of grant of the patent.
Civil and/or criminal remedies are available to a patent owner, as follows:
- Civil action: a civil infringement proceeding is brought by the patent owner before a state court. Typically, a plaintiff requests that the infringing acts are ceased and seeks the payment of damages, as well as a preliminary injunction to immediately stop the acts complained of.
- Criminal action: Articles 183 to 186 of Law #9,279/96 defines criminal conduct against patents, including importing, exporting, manufacturing or maintaining in stock any products that are the subject matter of an invention or utility model. These crimes are punishable by imprisonment (of between one month to one year) or a fine.
- Criminal proceedings against an alleged infringer start by a preliminary search and seizure proceeding to collect evidence. This proceeding is carried out by two experts appointed by the judge, who will verify the existence of a basis for the seizure. The expert report will be presented within three days after the end of the investigation. Once the report is approved by the judge, the victim will have 30 days to file a criminal complaint.
- Border measures: customs authorities can seize any counterfeit product at the time of clearance. The patent owner may then file a complaint to obtain judicial seizure and/or destruction of the products. A preliminary injunction may be requested by the plaintiff seeking to block the products at the border. However, such measures are not used very often, since establishing infringement requires the submission of an expert technical opinion.
Article 225 of Law #9,279/96 establishes a 5-year limitation period to bring an action to recover damages for a violation of patent rights. Said period begins to run after the last infringement act. The usual deadline regarding injunctive measures is 10 years as per the Brazilian Civil Code, but this is still a controversial matter in the courts and legal doctrine.
3. Obtaining a patent
The Brazilian Patent and Trademark Office (BPTO) is the government agency in charge of the grant procedure of a patent application for inventions or utility models.
Typically, the following administrative fees are due to the BPTO (bearing in mind an exchange rate of USD1 = BRL4):
- Filing of a patent application (invention or utility model): approx. USD45 (or BRL175)
- Request for examination of a patent application: approx. USD150 (or BRL590) for a patent containing up to ten claims and approx. USD100 (or BRL380) for a utility model
- Annuities within the ordinary term:
- For a patent invention:
- pending application: approx. USD75 (or BRL295)
- granted patent, 3rd to 6th year: approx. USD200 (or BRL780)
- granted patent, 7th to 10th year: approx. USD300 (or BRL1220)
- granted patent, 11th to 15th year: approx. USD410 (or BRL1645)
- granted patent, 16th to 20th year: approx. USD500 (or BRL2005)
- For a utility model patent:
- pending application: approx. USD55 (or BRL200)
- granted patent, 3rd to 6th year: approx. USD100 (or BRL405)
- granted patent, 7th to 10th year: approx. USD200 (or BRL805)
- granted patent, 11th to 15th year: approx. USD300 (or BRL1210)
- For a patent invention:
- Granting of a patent application (invention or utility model): approx. USD60 (or BRL235)
A patent application may be rejected on the following grounds:
- Lack of novelty, inventive step and industrial application (Article 8 of Law #9,279/96).
- The subject matter is not patentable, as per Articles 10 and 18 of Law #9,279/96 (further details in answer to question 3.7 below).
- Lack of unity of invention (Article 22 of Law #9,279/96) or lack of single principal model for a utility model (Article 23 of Law #9,279/96).
- Lack of enablement. Indeed, the specification must describe the subject matter clearly and sufficiently so as to enable a person skilled in the art to carry it out and to indicate the best mode of execution, when applicable (Article 24 of Law #9,279/96).
- Lack of clarity and precision of the subject matter to be protected. In this regard, the claims must be based on the specification, characterizing the particularities of the application and defining clearly and precisely the patented subject (Article 25 of Law #9,279/96).
- A divisional application will be dismissed if it is not requested up to the end of the examination of the parent application. Further, it must make specific reference to the parent application and may not exceed the matter disclosed in the parent application (Article 26 of Law #9,279/96).
3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?
Applicants may request fast track examination in the following cases:
- Applicants (natural person) that are more than 60 years old;
- Applications infringed by third parties;
- Applicants who need a granted patent to obtain funding for exploration of their inventions;
- Applicants (natural person) with a physical or mental disability, or carrying a serious illness;
- Applications relating to treatment of AIDS, cancer, rare or neglected diseases;
- Applications filed by small entities;
- Applications filed by science and technology institutions;
- Applications filed in Brazil that serve as priority for applications filed abroad;
- Applications covering Green Technologies; and
- Applications under a Patent Prosecution Highway (PPH) Pilot Programme: as of December 1st, 2019, a new PPH Pilot Programme, with standardized requirements and governed by a single rule (#252/19), was implemented. The BPTO has already signed PPHs agreements with the following Patent Offices (Japan, Argentina, Colombia, Chile, Costa Rica, Denmark, El Salvador, Ecuador, Nicaragua, Panama, Paraguay, Peru, Uruguay, Europe-EPO, United States, United Kingdom, Dominican Republic, China, Austria, Sweden and South Korea).
Additionally, the following parties may request fast track examination:
- Third parties being accused of unduly copying the object of a patent application;
- Third parties that hold a technology that was subsequently filed as a patent;
- The Ministry of Health, in cases of patent applications for medicaments acquired by the National Public Health System (SUS); and
- The State when a national emergency is declared or when there is a public interest in the examination of a given application.
In July 2019, the BPTO issued two Rules (#240/19 and #241/10) aiming at putting an end to the patent backlog within two years. Basically, these rules state that the BPTO will use search reports that were already issued in corresponding patent application proceedings carried out by a foreign patent office to expedite examination.
3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (e.g.: medical method claims)?
According to the Brazilian practice, claims are divided in two basic types: product (related to a physical entity) and process (related to an activity) claims. For instance, claims directed to an apparatus, object, article, equipment, machine, device, system, compound, composition and kit are considered product claims. A process, method and use are acceptable as process claims.
Generally, a claimed product must be defined by its own features capable of unequivocally identifying it. The Markush structure is acceptable for compounds and biological sequences. Claims directed to a product defining it in terms of its manufacturing process (“product-by-process” format) are allowed in exceptional cases in which the product cannot be defined otherwise. Method claims must be defined by its steps.
Medical method claims are not accepted. Therapeutic, operating or surgical methods are not considered an invention under Law #9,279/96.
The following claim formats are rejected for being directed to a therapeutic method:
- Method of treating medical condition Y characterized by administering compound X to a subject.
- Use of compound X characterized by being in the treatment of a medical condition Y in a subject.
- Compound X characterized by being used in a therapeutic method.
- Compound X characterized by being used in the treatment of medical condition Y.
The Swiss style (“use of a compound X characterized by being in the manufacture of a medicament for treating medical condition Y”) is potentially patentable as a use claim format.
Software per se is not considered invention either. The BPTO does not accept software claims, unless redrafted as CRM (computer readable medium) claims, comprising instructions to be processed by a processor.
Omnibus claims are prohibited, as well as any citation to the specification and figures in the claims.
Multiple dependent claims are allowed, provided that the dependent claims refer to a single claim category and are drafted in the format “according to any one of the preceding claims/claims X to Y”.
3.6 Are any procedural or legal mechanisms available to extend patent term (e.g.: adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
There is no mechanism to extend patent term under the provisions of Law #9,279/96. At the end of the term of protection the object of the patent falls within the public domain.
It is important to highlight, however, a specific provision in Law #9,279/96 that exists to compensate for the BPTO’s delay. The expiry date of a patent invention is 20 years from filing (15 years for a utility model). Nevertheless, this term cannot be less than 10 years for patented inventions (7 years for utility models patents), counted from grant. This provision is automatically applied by the BPTO for all patents that fall within this situation.
Any invention that has as object a new product or process, in all fields of technological application, provided that they meet the requirements of novelty, inventive step and industrial application are patent eligible. An object of practical use, or part thereof, shall be patentable as a utility model if it is intended for industrial use, presents a new shape or arrangement and involves an inventive act, resulting in functional improvement in its use or manufacture.
Nevertheless, Law #9,279/96 excludes as invention or utility model the following: (i) discoveries, scientific theories and mathematical methods; (ii) purely abstract concepts; (iii) schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature; (iv) literary, architectural, artistic and scientific works or any aesthetic creation; (v) computer programs per se; (vi) the presentation of information; (vii) rules of games; (viii) operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body; and (ix) natural living beings, in whole or in part, biological material, and natural biological processes (Article 10 of Law #9,279/96).
Further, Article 18 of Law #9,279/96 states that the following are also not patentable: (i) whatever is contrary to morals, good customs and public security, order and health; (ii) substances, matter, mixtures, elements or products of any kind, as well as the modification of their physical or chemical properties and the respective processes of obtaining or modifying them, when they result from the transformation of the atomic nucleus; and (iii) living beings except transgenic micro-organisms that are not discoveries.
Any decision of the BPTO may be subject to an appeal before the federal courts, within a period of five years.
4. Validity/post-grant review and/or opposition procedures
The validity of a granted patent can be challenged either before the BPTO (when it is not the plaintiff) within 6 months after patent grant (Article 51 of Law #9,279/96) or before the federal courts (Article 57 of Law #9,279/96).
According to Article 56 of Law #9,279/96, invalidity (or nullity) of an issued patent can be argued, at any time, as a matter of defence in patent infringement actions. However, a specific action must still be filed before a federal court, since the BPTO must be a mandatory co-defendant together with the patent owner. In this regard, it is noteworthy that the Brazilian legal system adopts a bifurcated process: (i) state courts hear infringement lawsuits; and (ii) federal courts hear invalidity lawsuits and all cases regarding the review of acts by the federal administration.
As answered in question 4.1 above, the validity of a granted patent can be challenged before the BPTO during an administrative nullification proceeding, as well as before the federal courts during the course of an invalidity lawsuit. In other words:
- Post-grant review before the BPTO: any third party with legitimate interest or the BPTO itself may challenge a granted patent by filing a post-grant review within 6 months from grant (Article 51 of Law #9,279/96). If it succeeds, the patent is invalidated with retroactive effect to the date of filing.
- Invalidity lawsuit before federal courts: at any time during the term of the patent, any party with legitimate interest may bring an invalidity lawsuit before the federal courts (Article 56 of Law #9,279/96). The validity of a patent may also be discussed during the course of a declaratory validity lawsuit to be filed by the patent owner before the federal courts.
- Invalidity as a matter of defence: as per Article 56 of Law #9,279/96, invalidity of a granted patent can be argued, at any time, as a matter of defence. As already mentioned, the alleged infringer must file a separate lawsuit to argue patent invalidity before the federal courts with the BPTO as a mandatory co-defendant together with the patentee.
In general terms, a patent granted in violation of any legal requirements of Law #9,279/96 may be invalidated (Article 46 of Law #9,279/96). But, the most common grounds are the following:
- Lack of novelty, inventive step and industrial applicability for an invention (Article 8 of Law #9,279/96). And, for a utility model, lack of industrial application, new shape or arrangement, and inventive act that results in a functional improvement is its use or manufacture (Article 9 of Law #9,279/96).
- Non-patentable subject matter for an invention and for a utility model (Articles 10 and 18 of Law #9,279/96).
- Lack of enablement, i.e., lack of clear and sufficient description, so as to enable a person skilled in the art to carry out with the invention (Article 24 of Law #9,279/96).
- Lack of support in the specification, since claims must be based on the specification, characterizing the particularities of the application and defining clearly and precisely the subject matter to be protected (Article 25 of Law #9,279/96).
Based on the grounds to invalidate a granted patent mentioned in the answer to the question 4.3 above, the party seeking to invalidate the patent must show, through technical evidence (e.g. technical opinions prepared by experts from Brazilian and foreign universities), that the patent violates one or more provisions of Law #9,279/96.
Since the BPTO is a mandatory co-defendant together with the patentee in a nullity action filed before the federal courts, it will present its own technical opinion, based on its analysis during the administrative process. A federal judge may use the BPTO’s technical opinion to decide the case. Due to the technical and scientific specificities involved in an invalidity lawsuit, a federal judge may also rely on a technical opinion submitted by an unbiased court-appointed expert.
4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?
Within 6 months from the publication in the BPTO’s Official Gazette of the grant of the patent, any third party with legitimate interest may request its administrative nullity before the BPTO (or post-grant proceedings).
It is worth noting that Law #9,279/96 does not provide for a formal pre-grant opposition, but any interested party may submit to the BPTO prior art references and/or comments regarding the patentability from the publication until the end of the examination of the application (Art. 31 of Law #9,279/96). These are similar to European third parties’ observations. Third parties may also oppose the granting of a patent by submitting documents and information within a 60-day term after publication of any administrative appeal filed by the applicant against a first instance decision by the Patent Examiner.
In addition, at any time during the term of the patent, any third party with a legitimate interest may bring an invalidity lawsuit before the federal courts (Article 56 of Law #9,279/96).
Any third party with legitimate interest can oppose a granted patent by starting an administrative nullity proceeding (Article 51 of Law #9,279/96) before the BPTO. The nullity administrative proceeding may also be instituted ex oficio by the BPTO.
Additionally, the BPTO itself or any third party with a legitimate interest can file an invalidity lawsuit before federal courts at any time during the term of a patent (Article 56 of Law #9,279/96).
Third party observations may be submitted until the end of the examination of the patent application.
Within six months counted from the grant of the patent, an administrative nullity proceeding may be started by the BPTO or by any third party with a legitimate interest (Article 51 of Law #9,279/96).
In addition, an invalidity lawsuit before the federal courts can be filed at any time during the term of the patent by the BPTO or by any party with a legitimate interest (Article 56 of Law #9,279/96).
Basically, as per Article 50 of Law #9,279/96, the invalidity (or nullity) of a granted patent will be declared by the BPTO when: (i) any of the legal requirements have been met (lack of novelty, inventive step and industrial application); (ii) the specification and the claims do not meet the requirements of enablement (Article 24 of Law #9,279/96) and support in the specification (Article 25 of Law #9,279/96), respectively; (iii) the subject matter of the patent extends beyond the contents of the application as originally filed; or (iv) any of the essential formalities indispensable for grant were omitted during prosecution.
As previously mentioned, any third party with legitimate interest may request its administrative nullity before the BPTO within 6 months from the publication of the grant of the patent. This proceeding will be decided by the Commissioner of the BPTO, terminating the administrative proceedings available before the BPTO. Three outcomes are possible: (i) the patent is maintained; (ii) the patent is revoked; or (iii) the patent is maintained but with amended claims.
Under the doctrine of judicial review, a final decision of the BPTO, whether it maintains the validity of the granted patent or determines its invalidity, is subject to an appeal before the federal courts, within a period of 5 years, by way of a declaratory lawsuit to obtain the nullity of the administrative decision.
4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?
During an administrative post-grant review, the BPTO will issue a technical opinion upon which it will decide the administrative nullity proceeding. The same applies to an invalidity lawsuit, since the BPTO – a mandatory co-defendant – will issue its technical opinion upon which the federal judge may decide the case.
Additionally, during an invalidity lawsuit, federal judges may, as a preventive or incidental measure, stay the effects of a patent. Also, they may rely on a technical opinion submitted by an unbiased court-appointed expert. Parties may appoint their own technical assistants to provide technical information to the expert. Parties may also file technical and legal opinions prepared by experts from Brazilian and foreign universities.
In both cases, the plaintiff bears the burden of proof and needs to prove through written arguments and documentary evidence, for instance, the lack of fulfilment of the legal requirements or the violation of any section of Law #9,279/96 by the patent. The burden of proof is reversed in an infringement lawsuit concerning the violation of a process claim. In this case, the alleged infringer has to prove, through specific judicial ruling, that the product in question was obtained by a manufacturing process different from the one protected by a patent (Article 42, §2 of Law #9,279/96).
As previously mentioned, a final post-grant review decision of the BPTO, whether it maintains the validity of the granted patent or determines its invalidity, may be subject to an appeal before the federal courts, within a period of 5 years, by any of the parties.
In this regard, the party must be able to show that the BPTO’s decision is incorrect. To do so, the most common grounds are again: (i) Lack of novelty, inventive step and industrial applicability for an invention (Article 8 of Law #9,279/96); (ii) Lack of enablement, i.e., lack of clear and sufficient description, so as to enable a person skilled in the art to carry the invention out (Article 24 of Law #9,279/96); (iii) Lack of support in the specifications, since claims must be based on the specification, characterizing the particularities of the application and defining clearly and precisely the subject matter to be protected (Article 25 of Law #9,279/96); and (iv) Claim amendments made after the request for examination and/or were not limited to the subject matter initially disclosed in the application (Article 32 of Law #9,279/96).
5. Patent enforceability
As per Article 43 of Law #9,279/96, patents are not enforceable against:
- Acts practiced by unauthorized third parties privately and for non-profit purposes, provided they are not detrimental to the economic interests of the patentee;
- Acts practiced by unauthorized third parties for experimental purposes, related to studies or to scientific or technological research;
- Preparation and use of a medicine according to a medical prescription for individual cases, which is carried out by a qualified professional;
- A product manufactured under a patent that has been placed on the domestic market directly by the patentee or with his consent;
- Third parties that for patents related to living matter, use, for non-profit purposes, the patented product as the initial source of variation or propagation for obtaining other products;
- Third parties that for patents related to living matter, use, place in circulation or commercialize a patented product that has been introduced lawfully on the market by the patentee or his licensee, provided that the patented product is not used for commercial multiplication or propagation of the living matter in question; and
- Acts practiced by unauthorized third parties relating to the patented invention exclusively to produce information, data and test results to seek market approval in Brazil or abroad, in order to exploit or commercialize the patented product after the term has expired (regulatory review exception, or “Bolar” exemption).
A patent is unenforceable if a third party, in good faith, exploited its object in Brazil, prior to the filing or priority date (Article 45 of Law #9,279/96). A claim for damages cannot be filed after 5 years from the infringing act (Article 225 of Law #9,279/96), while the deadline regarding injunctive measures is 10 years (Brazilian Civil Code), but this is still an unsettled matter.
There are no provisions related to inequitable conduct standards under Law #9,279/96. However, an applicant is expected to act in good faith towards third parties and the BPTO throughout the entire prosecution of his patent application, as well as during an infringement or invalidity lawsuit.
Furthermore, an applicant or patent owner could be held liable for abuse of its rights if it files a lawsuit with a preliminary injunction request to immediately stop an infringement that he was well aware of prior to the filing and tolerated it. The same applies if the patent owner files an infringement lawsuit against a potential licensee with whom it has been negotiating an agreement and inciting the defendant to use the invention.
In principle, there is no duty of candour of the BPTO under Law #9,279/96. Nevertheless, it must comply with several administrative and constitutional general principles of law, such as: (i) legality; (ii) impersonality; (iii) morality; (iv) publicity; (v) efficiency; (vi) purpose; (vii) motivation; (viii) reasonableness; (ix) proportionality; (x) legal certainty; and (xi) public interest.
The BPTO must also follow due process of law during its proceedings. Its acts and decisions are endowed with a presumption of legality and veracity.
An applicant, in turn, is expected to act at least in good faith throughout the entire administrative proceeding before the BPTO.
6. Patent infringement
As per Article 42 of Law #9,279/96, the patentee has the right to prevent third parties from, without its consent, manufacturing, using, offering for sale, selling or importing a product that reproduces the object of the patent and a process or a product directly obtained from a patented process.
With regards to indirect infringement, third parties can be prevented from contributing to infringing acts committed by others (Article 42, § 1º of Law #9,279/96).
The unauthorized use of a patented invention is also a crime. This includes the use of a component of a patented object or any material or equipment for implementing a patented method, provided that the final use of the component, material or equipment results in patent infringement. Such criminal offences are subject to sanction by imprisonment or fine (Articles 183 to 185 of Law #9,279/96). Furthermore, said crimes are considered to have been committed when the infringement: (i) does not affect all the claims of the patent; or (ii) is restricted to the use of means equivalent to the object of the patent (Article 186 of Law #9,279/96).
The assessment of patent infringement is usually made by comparing the concerned patent claims properly construed and the technical features of the infringing product/method or process as it will be further discussed in the answer to question 8.2 below.
Article 186 of Law #9,279/96 states the possibility to establish indirect infringement by applying the doctrine of equivalents. In this regard, patent infringement may be established even if the violation is restricted to the use of means equivalent to the subject matter of the patent. Nevertheless, nothing in the Brazilian patent law system defines how to assess equivalence. A common approach is to start with the “all elements” rule and check, for each element, the presence of equivalence using tests like the tripartite test.
Patent infringing acts must take place in the Brazilian territory for a supposed infringer to be liable and to answer for the infringement before Brazilian state courts.
There are no provisions for wilful infringement under Law #9,279/96.
The patent owner if the plaintiff in an infringement lawsuit, as per the Brazilian Civil Procedure Code. A licensee, exclusive or non-exclusive, may also bring an infringement action if they are authorized to do so by a written licensing agreement. Distributors and any party that has an interest to defend a patent may file an infringement lawsuit, provided that they were given specific powers to do so by the patent owner.
As mentioned in answer to question 5.1, a claim for damages as a result of patent infringement cannot be filed after 5 years from the infringing act (Article 225 of Law #9,279/96). Injunctive measures can be sought during a 10-year term (Brazilian Civil Code) from the occurrence of the infringing act. Nevertheless, this deadline is still a controversial issue between courts and doctrine.
Furthermore, due to the requirements of urgency and likelihood of success to obtain a preliminary injunction, an infringement lawsuit should be filed as soon as the infringing activity is known.
Brazilian patent law does not establish specific pleading standards to initiate an infringement lawsuit different from the ones applicable in other civil actions.
Nevertheless, there must exist a valid patent title and cause of action (i.e., evidence of actual or potential infringement such as manufacture or sale of violating products). The plaintiff must expose in the complaint the facts of the case, its legal standings and request for remedies (e.g. preliminary and permanent injunctions, specific sanctions and damages). The infringement analysis should be clearly stated and supported by technical reports by renowned experts from Brazilian and foreign universities, as well as legal opinions from renowned scholars. We cannot stress enough the importance of gathering this type of documentary evidence in light of the technical and scientific difficulties involved in a patent infringement lawsuit. Such technical reports will also contribute to increase in a significant manner the chances of obtaining a preliminary injunctive relief.
In Brazil, plaintiffs usually request an ex parte preliminary injunction to seek the immediate discontinuance of the infringement. Such order is subject to specific requirements: (i) the likelihood of success on the merits; and (ii) the risk for the plaintiff of suffering irreparable harm if no action is taken before a final decision on the merits. Besides, the requested injunctive measure cannot be irreversible.
As already mentioned, the Brazilian legal system follows a bifurcated process. Enforcement is a matter of state jurisdiction as opposed to invalidity lawsuits that are filed before federal courts (due to the presence of BPTO as a co-defendant, when it is not the plaintiff).
Patent infringement lawsuits are filed before state courts, which are divided into civil and criminal. As violation to patent rights is also considered a crime, the patent owner can rely on both civil and criminal measures to enforce its rights.
The state courts of Rio de Janeiro and São Paulo hear the great majority of patent infringement lawsuits. Both have district courts specialized in commercial disputes, including patent infringement lawsuits in the case of the State Court of Rio de Janeiro. The Federal Court of Rio de Janeiro also has courts specialized in IP matters that hear patent invalidity cases.
Additionally, as mentioned in answer to question 2.2, border measures are a further measure to enforce patent rights. Customs authorities can seize counterfeited patented products at the time of clearance followed by the filing of a judicial complaint by the patent owner to seize and/or destroy the goods, as well as a preliminary injunction to block products at the border. Nevertheless, such measures are rare in practice, since establishing infringement typically requires the submission of an expert technical opinion.
A patent infringement lawsuit can either be filed in the court where the infringer has its domicile or in the court where the infringement took place. Usually, a plaintiff requests that the infringement acts are ceased and the payment of damages, as well as an ex parte preliminary injunction to cease the infringement until a decision on the merits is rendered.
Differently from a civil action, a criminal action starts with a preliminary search and seizure proceeding to collect evidence of infringing acts. This proceeding will be conducted by two court-appointed experts. Once the expert report is submitted and approved by the judge, the patent owner will have a 30-day term to file a criminal complaint and start the criminal proceeding. As this type of search and seizure is less complex and more straightforward than undergoing proceedings to gather preliminary evidence in a civil action, criminal search and seizures are often used before filing a civil action.
The trial judge is the fact finder in the first instance. There is no jury. An unbiased court-appointed expert may assist the trial judge with the technical and scientific issues of the case.
No. The fact finder remains the same. Nevertheless, at appeal level, which involves a full review of all arguments, facts and evidence analysed and decided by the trial court, the appeal is decided by a panel of three judges.
Before filing the complaint, the plaintiff may serve the defendant with a cease and desist letter. Preliminary measures to preserve evidence may also be taken by the plaintiff. Once the complaint is filed, the defendant will be notified to present its answer within 15 days. The plaintiff then replies to the defendant’s answer within a 10-day term.
A request for preliminary injunction is usually examined within 5 days from the filing of the complaint. After the clarification of any procedural irregularities, parties may state the evidence they want to produce.
A conciliatory hearing usually takes place after that, in which the parties may try to settle the case. In light of the technical difficulties of the case, the trial judge usually appoints an unbiased expert. Parties may appoint their own technical assistants. Once the court-appointed expert submits its technical opinion, the parties’ technical assistants may present their opinion in answer to the expert’s conclusions.
A final hearing, which is not mandatory and rare in practice, might then take place. In this hearing, the trial judge listens to the deposition of the parties and of their witnesses’. The court-appointed expert and the parties’ technical assistants may be required to appear during this hearing for cross-examination.
After this hearing, the judge may either render a final decision or order the parties to submit their final briefs, after which a final decision on the merits will be rendered. The timeframe to obtain a first instance decision is currently 2 to 4 years.
The most common civil remedies available for patent infringement are: (i) preliminary injunction to stop infringement under the penalty of a daily fine, as well as search and seizure orders; (ii) permanent injunction to stop infringement under the penalty of a daily fine; (iii) destruction and/or seizure of products and material involved in the infringement; (iv) removal of the infringing products from the market; and (v) payment of damages for loss of profits and moral damages.
Criminal remedies include preliminary criminal search and seizure measures, imprisonment and fines.
There are several types of appeal established by the Brazilian Civil Procedure Code. The main grounds for appeal are clarification, reform or invalidation of a first instance decision.
The most common appeals available to the parties are: (i) interlocutory appeal against first instance decisions issued in a preliminary fashion, e.g. preliminary injunctions or trial decisions issued during the course of the lawsuit; and (ii) appeal, which can be filed against a first instance decision on the merits, and refers to appeals court all the issues discussed in first instance.
In both cases, appeals court can grant suspensive effect to the appeal. If it is not granted at the appeal level, the content of the decision (preliminary injunction or decision on the merits) can be enforced immediately. Otherwise, the enforcement of the decision is not possible and will depend on the outcome of the decision on the merits of the appeal.
Furthermore, if the decision issued by the appeal court is contrary to the ordinary law or to the Federal Constitution, the party can file a special appeal to the Superior Court of Appeals or an extraordinary appeal to the Supreme Court, respectively.
Brazilian procedural law does not provide for pre-trial discovery as is provided for in common law countries.
As mentioned previously, there is no discovery in Brazil. Nevertheless, parties can ask the court to order each one of them to produce specific evidence.
Plaintiffs can also ask the court to determine the early production of evidence by way of a preliminary search and seizure proceeding to gather relevant documents and infringing products.
In the pleadings phase, the plaintiff will produce evidence in the initial complaint (essentially documentary evidence constituted by technical opinions prepared by experts from Brazilian and foreign universities). The defendant produces documentary evidence in its answer to the complaint.
Other types of evidence that can be produced are oral evidence, personal deposition of the parties and witness statements, expert evidence, court inspections, as well as any other evidence a judge considers appropriate to the case.
With regards to expert evidence, due to the technical or scientific aspects of a patent infringement case, trial judges usually appoint an unbiased court expert. Parties may appoint their own technical assistants to provide information to the expert. The court-appointed expert and the parties’ technical assistants may be required to appear during the hearings for cross-examination.
In principle, under Brazilian procedural law, there is no limitation to the production of evidence, since the plaintiff may submit all legal and morally legitimate pieces of evidence.
8. Claim construction
The trial court will usually work on defining claim terms throughout the expert examination phase of the proceedings. This definition of the claim terms will be finalized once the trial judge renders a first instance decision on the merits of the case.
Indeed, due to the technical and scientific specificities of a patent infringement case, judges tend to nominate an unbiased court expert to conduct an examination and provide the trial judge with its opinion on the technical aspects of the case, especially in relation to claim construction.
There is no legal standard for defining claim terms. But, in practice infringement is commonly determined by way of: (i) an analysis of the patent claims, in order to define the scope of protection; and (ii) a comparison between the accused product and the properly construed claim chart.
The first step to interpret claims will require the application of legal standards:
- 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 (Article 41 of Law #9,279/96).
- Claims must be based on the specification, characterizing the particularities of the application and defining clearly and precisely the subject matter that is the object of the protection (Article 25 of Law #9,279/96)
Patents in Brazil are also governed by the BPTO’s resolutions and guidelines, which require claims to be structured according to the “Jepson claims” type. Such claims are formulated in the following order: (i) preamble enumerating all elements or steps of a combination claimed that are conventional or known; (ii) an expression of connection, for instance, “characterized by”; and (iii) a body containing all the elements, steps and/or relationships that constitute part of the combination claimed and which the inventor considers new.
The second step of the analysis involves the application of the “all elements rule”, i.e., for a patent to be infringed, the accused product or process must have all the limitations of the “characterizing part” of at least one of the independent claims of the concerned patent.
When defining claim terms, a trial judge will essentially take into consideration the analysis conducted by the non-biased court-appointed expert who will be answering questions presented by the parties and by the judge. The court-appointed expert, in its turn, may use other documents, but its analysis is usually based on the documents submitted by the parties and their respective technical assistants.
It is important to note that in an invalidity lawsuit before the federal courts, in which the BPTO is a co-defendant together with the patent owner, the judge may rely on the court-appointed expert technical report, but also on the BPTO’s analysis of the case.
Yes. Injunctions on a preliminary or permanent basis are available, allowing trial court judges to immediately order the defendant to stop using or selling the patented invention, to conduct searches and seizures, or to order a recall of the infringing products.
Courts grant preliminary injunctions upon prima facie evidence of: (i) likelihood of prevailing on the merits; and (ii) the risk of irreparable harm. Hence, one should not wait too long to file an infringement lawsuit or to request a preliminary search and seizure. On the contrary, the trial judge might consider that there is no urgency to grant an ex parte preliminary injunction. Additionally, the injunctive measure requested cannot be irreversible.
The battle over the injunction happens in the very beginning of a lawsuit. This is the main reason why technical evidence must be well prepared before filing (see answer to question 6.7).
A preliminary injunctive relief may be granted without the previous hearing of the defendant and may be subject to a daily penalty fine in case the alleged infringer does not comply with its terms. In some cases, a judge may order the plaintiff to post a bond when granting the preliminary injunction.
Yes, damages are available.
As per Article 209 of Law #9,279/96, the aggrieved party is reserved the right to receive losses and damages in compensation for losses caused by acts of violation of patent rights.
Damages are usually sought in patent infringement proceedings. Compensation will be determined by the benefits that the injured party would have gained had the violation not occurred (Article 208 of Law #9,279/96). The plaintiff is also entitled to obtain compensation for damages caused between the date of publication of the application and the grant of the patent.
Loss of profits will be determined based on the following criteria (in the light most favorable to the injured party): (i) the benefits that would have been gained by the injured party if the violation had not occurred; (ii) the benefits gained by the author of the violation of the rights; or (iii) the remuneration that the author of the violation would have paid to the proprietor of the violated rights for a granted license which would have legally permitted him to exploit the subject of the rights (Article 210 of Law # 9,279/96).
The plaintiff can also request indemnification for moral damages, provided that it can prove that the company’s business or reputation has been adversely affected by the infringement. However, moral damages are rarely granted in patent infringement cases.
See answer to question 9.2 above.
There are no punitive damages in Brazil and courts do not tend to apply them.
Yes. See answers to questions 6.13 and 9.4 above.
See answers to questions 6.13 and 9.4 above.
Yes, at least in part. The prevailing party may recover attorney’s fees and part of the court fees, as well as other expenses incurred during the course of the lawsuit (e.g. court-appointed expert’s fees).
Attorneys’ fees are limited to between 10% and 20% of the amount of damages recovered by the plaintiff.
As per Article 61 of Law # 9,279/96, an applicant or a patent owner may grant a license to a licensee for exploitation of the object of the patent, such as by manufacturing, using, selling or offering for sale. The licensee may be invested by the patentee with all powers to act in defense of the patent. A license agreement may be granted in an exclusive or non-exclusive manner.
A patent owner can impose a several limitations on a license, such as by limiting the extent of the contract to the territory it applies and its term, as well as offering an exclusive or non-exclusive license. Patent owners can also restrict the licensee’s right to sub-license the patent to a third party.
As per Article 63 of Law # 9,279/96, any improvement to a licensed patent belongs to the person who made it, the other contracting party being guaranteed the right of preference for a license.
License agreements must be registered in the BPTO to: (i) produce effects against third parties; (ii) allow the remittance of royalties abroad; and (iii) allow tax deduction of the amounts paid as royalties (Article 211 of Law # 9,279/96). When analyzing the contract, the BPTO limits the terms of the agreements, especially with regards to duration, amount of royalties and payment methods.
For example, the BPTO uses tax legislation that limits tax deductibility of royalties (Rule #436/58) to apply the same rule to the remittance of royalties abroad. The ordinance provides for percentages fixed between 1 and 5% of the revenue generated by the exploitation of the licensed technology. Nevertheless, this intervention has decreased since the BPTO Rule #70/2017, which has limited the agency’s interference to formal aspects and general conditions of admissibility for the registration of the contract. This has allowed greater flexibility to the parties to negotiate the terms of a patent license agreement.
In principle, there are no limits on patent protection due to antitrust laws, provided that patent rights are exercised without any abuse. In this regard, it should be noted that the patent owner can be subject to a complaint for abusing its industrial property rights through “sham litigation” before the Brazilian Competition Authority (CADE). For instance, the Antitrust Authority decided complaints involving the supposed abuse of standard essential patents, as well as an unjustified infringement lawsuit based on a patent that had expired.
More recently, CADE decided what could be considered the most emblematic case involving antitrust violation and industrial property in Brazil. The case lasted more than 10 years and involved the alleged abuse of industrial property rights (in this case, industrial designs) by automakers when exercising their right to register in the secondary market (replacement) of automotive parts. The antitrust authority ended up dismissing the complaint filed by a national association of automotive parts manufacturers against three major automakers.