1 Legal framework
1.1 What are the sources of patent law in your jurisdiction?
The substantive regulations governing patents are set out in the Brazilian Industrial Property Law (Federal Law 9,279 of 14 May 1996) (IPL), which was enacted following the implementation of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) into the Brazilian legal system through Decree 1,355/1994.
Other legal provisions that regulate the matter include:
- the Federal Constitution; and
- the normative rulings of the Brazilian Patent and Trademark Office (BPTO).
At 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, including:
- the World Intellectual Property Organization Paris Convention for the Protection of Industrial Property of 20 March 1883; and
- the Washington Patent Cooperation Treaty of 19 June 1970.
Patent case law, common customs and general principles of law can also be taken into consideration to resolve disputes. Patent case law comes principally from state and federal courts, but it is not seen as binding legal precedent.
1.2 Who can register a patent?
A company, any other legal entity or the inventor (a natural person) may apply to register a patent before the Brazilian Patent and Trademark Office, which is responsible for granting patents in Brazil.
Article 6, Section 2 of the IPL states that the inventor's heirs or successors, as well as any assignee or whoever the law or a work or service contract determines to be the owner, may also register a patent.
2.1 What rights are obtained when a patent is registered?
Where a patent application is granted, the owner is entitled to the following rights:
- Right of property: Under Article 6 of the Industrial Property Law (IPL), the inventor is assured the right to obtain a patent that guarantees it the property, under the terms established by law – that is, the exclusive right to exploit the patent.
- Right of exclusion: Pursuant to Article 42 of the IPL, a patent confers on its owner the right to prevent unauthorised third parties from manufacturing, using, offering for sale, selling or importing for such purposes:
- a product that is the subject of the patent; or
- a process or product directly obtained through a patented process.
- The patent owner is further guaranteed the right to prevent third parties from contributing to the infringements of others. Additionally, for a patented process, the corresponding rights will be considered violated if the owner of a product fails to prove, through a specific judicial ruling, that the product was obtained through a different manufacturing process from the patented process. Article 43 of the IPL sets out several limitations to the right of exclusion
- Right to obtain compensation: As set forth in Article 44 of the IPL, a patent owner is granted the right to obtain compensation for the unauthorised exploitation of the subject matter of the patent, including exploitation that occurred between the date of publication of the application and the date of grant of the patent.
2.2 How can a patent owner enforce its rights?
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, the plaintiff requests cessation of the infringing acts and seeks the payment of damages, as well as a preliminary injunction to immediately stop the infringing acts.
- Criminal action: Articles 183 to 186 of the IPL govern criminal conduct in relation to patents, which includes importing, exporting, manufacturing or maintaining in stock any products that are the subject matter of a patent (for an invention or a utility model). These crimes are punishable by imprisonment of between one month and one year, or a fine.
- 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 seldom used, as establishing infringement requires the submission of an expert technical opinion.
2.3 For how long are patents enforceable?
Article 225 of the IPL establishes a five-year limitation period in which to bring an action to recover damages for a violation of patent rights. This period begins to run from the date of the last infringing act. The usual deadline for injunctive measures is 10 years as per the Brazilian Civil Code, although this is still a controversial matter in the courts and legal doctrine.
3 Obtaining a patent
3.1 Which governing body controls the registration procedure?
The Brazilian Patent and Trademark Office (BPTO) is the government agency in charge of granting patents for inventions and utility models.
3.2 What is the cost of registration?
Typically, the following administrative fees are due to the BPTO (the listed amounts in US dollars are approximate values and will vary according to the exchange rate. We have used an average exchange rate of $1 = BRL 4):
- Filing of a patent application (invention or utility model): BRL 175 (approximately $45).
- Request for examination of a patent application: BRL 590 (approximately $150) for a patent containing up to 10 claims and BRL 380 (approximately $95) for a utility model.
- Annuities within the ordinary term:
- For an invention patent:
- Pending application: BRL 295 (approximately $75).
- Granted patent, third to sixth year: BRL 780 (approximately $195).
- Granted patent, seventh to tenth year: BRL 1,220 (approximately $305).
- Granted patent, 11th to 15th year: BRL 1,645 (approximately $410).
- Granted patent, 16th to 20th year: BRL 2,005 (approximately $500).
- For a utility model patent:
- Pending application: BRL 200 (approximately $50).
- Granted patent, third to sixth year: BRL 405 (approximately $100).
- Granted patent, seventh to tenth year: BRL 805 (approximately $200).
- Granted patent, 11th to 15th year: BRL 1,210 (approximately $300).
- Grant of a patent application (invention or utility model): BRL 235 (approximately $60).
3.3 What are the grounds to reject a patent application?
A patent application may be rejected on the following grounds:
- lack of novelty, inventive step or industrial application (Article 8 of the Industrial Property Law (IPL));
- non-patentable subject matter, as per Articles 10 and 18 of the IPL (see question 3.7);
- lack of unity of the invention (Article 22 of the IPL) or lack of a single principal model for a utility model (Article 23 of the IPL);
- lack of enablement. In this regard, 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, where applicable (Article 24 of the IPL);
- lack of clarity and precision of the subject matter to be protected. In this regard, the claims must be based on the specification, characterising the particularities of the application and defining clearly and precisely the patented subject matter (Article 25 of the IPL); and
- if a divisional application is not requested before the end of the examination of the parent application. Further, the divisional application must make specific reference to the parent application and may not exceed the subject matter disclosed in the parent application (Article 26 of the IPL).
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:
- The applicant (a natural person) is more than 60 years old;
- The invention that is the subject of the application is being infringed by third parties;
- The applicant needs a granted patent to obtain funding for exploration of the invention;
- The applicant (a natural person) has a physical or mental disability, or a serious illness;
- The application relates to the treatment of AIDS, cancer or rare or neglected diseases;
- The application is filed by a small entity;
- The application is filed by a science and technology institution;
- The application filed in Brazil serves as priority for applications filed abroad;
- The invention concerns green technologies; or
- The application is filed under a Patent Prosecution Highway (PPH) Pilot Programme. As of 1 December 2019, a new PPH Pilot Programme, with standardised requirements and governed by a single rule (252/19), was implemented. The BPTO has already signed PPH agreements with the patent offices of Japan, Argentina, Colombia, Chile, Costa Rica, Denmark, El Salvador, Ecuador, Nicaragua, Panama, Paraguay, Peru, Uruguay, Europe, the United States, the United Kingdom, the Dominican Republic, China, Austria, Sweden and South Korea.
Additionally, the following parties may request fast-track examination:
- third parties which are accused of unduly copying the subject matter of a patent application;
- third parties that own a technology for which a patent has subsequently been filed;
- the Ministry of Health, where the patent application concerns medicaments acquired by the National Public Health System; and
- the state, where a national emergency is declared or where 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) that aimed to end the patent backlog within two years. These rules state that the BPTO will use search reports that have already been 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 (eg, medical method claims)?
According to Brazilian practice, claims are divided in two basic types:
- product claims (relating to a physical entity); and
- process claims (relating to an activity).
For instance, claims directed to an apparatus, object, article, equipment, machine, device, system, compound, composition or kit are considered product claims. Claims directed to a process, method or use are acceptable as process claims.
Generally, a claimed product must be defined by its own features which are capable of unequivocally identifying it. The Markush structure is acceptable for compounds and biological sequences. Claims directed to a product that define it in terms of its manufacturing process (‘product-by-process' format) are allowed in exceptional cases where the product cannot be defined otherwise. Method claims must be defined by the steps of the method.
Medical method claims are not accepted. Therapeutic, operating or surgical methods are not considered inventions under the IPL.
The following claim formats are rejected as being directed to a therapeutic method:
- "Method of treating medical condition Y characterised by administering compound X to a subject";
- "Use of compound X characterised in the treatment of a medical condition Y in a subject";
- "Compound X being used in a therapeutic method"; or
- "Compound X being used in the treatment of medical condition Y".
The Swiss style ("use of a compound X 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 an invention. The BPTO does not accept software claims, unless they are redrafted as 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 (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
There is no mechanism to extend the patent term under the IPL. At the end of the term of protection, the subject matter of the patent falls within the public domain.
However, a specific provision in the IPL exists compensate for delay at the BPTO. The expiry date of a patent invention is 20 years from filing (15 years for a utility model). However, this term cannot be less than 10 years for patented inventions (seven years for utility models patents), as from the date of grant. This provision is automatically applied by the BPTO for all patents in the event of delay.
3.7 What subject matter is patent eligible?
All inventions for new products or processes in all fields of technological application are patent eligible, provided that they meet the requirements of novelty, inventive step and industrial application. An object of practical use, or part thereof, is 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 a functional improvement in its use or manufacture.
Nevertheless, Article 10 of the IPL provides that the following are not patentable:
- discoveries, scientific theories and mathematical methods;
- purely abstract concepts;
- schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature;
- literary, architectural, artistic and scientific works or aesthetic creations;
- computer programs per se;
- the presentation of information;
- the rules of games;
- operating or surgical techniques and therapeutic or diagnostic methods for use on humans or animals; and
- natural living beings, in whole or in part, biological materials and natural biological processes.
Further, Article 18 of the IPL states that the following are also not patentable:
- anything that is contrary to morals, good customs or public security, order and health;
- 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, where they result from the transformation of the atomic nucleus; and
- living beings, except transgenic micro-organisms that are not discoveries.
3.8 If the patent office does not grant a patent, is an appeal available and to whom?
Any decision of the BPTO may be subject to appeal before the federal courts within five years.
4 Validity/post-grant review and/or opposition procedures
4.1 Where can the validity of an issued patent be challenged?
The validity of a granted patent may be challenged either before the Brazilian Patent and Trademark Office (BPTO) within six months of patent grant (Article 51 of the IPL) or before the federal courts (Article 57 of the Industrial Property Law (IPL)).
According to Article 56 of the IPL, invalidity (or nullity) of an issued patent may be argued at any time as a defence in patent infringement suits. However, a specific action must still be filed before a federal court, as the BPTO is a mandatory co-defendant together with the patent owner. In this regard, it should be noted that the Brazilian legal system adopts a bifurcated process:
- State courts hear infringement lawsuits; and
- Federal courts hear invalidity lawsuits and all cases regarding the review of acts by the federal administration.
4.2 How can the validity of an issued patent be challenged?
As outlined in question 4.1, the validity of a granted patent may be challenged before the BPTO through an administrative nullification proceeding, as well as before the federal courts in the course of an invalidity lawsuit:
- Post-grant review before the BPTO: Any third party with a legitimate interest or the BPTO itself may challenge a granted patent by filing a post-grant review within six months of grant (Article 51 of the IPL). If it succeeds, the patent will be 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 a legitimate interest may bring an invalidity lawsuit before the federal courts (Article 56 of the IPL). The validity of a patent may also be challenged in 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 the IPL, the invalidity of a granted patent may be argued at any time as a defence in infringement proceedings. As mentioned, the alleged infringer must file a separate lawsuit to argue invalidity before the federal courts, with the BPTO as a mandatory co-defendant together with the patent owner.
4.3 What are the grounds to invalidate an issued patent?
In general, a patent that was granted in violation of any legal requirements of the Industrial Property Law may be invalidated (Article 46 of the IPL). The most common grounds are as follows:
- for an invention, lack of novelty, inventive step or industrial application (Article 8 of the IPL); or for a utility model, lack of industrial application, novel shape or arrangement, or inventive act that results in a functional improvement in use or manufacture (Article 9 of the IPL);
- non-patentable subject matter, for both an invention and a utility model (Articles 10 and 18 of the IPL);
- lack of enablement – that is, lack of a clear and sufficient description so as to enable a person skilled in the art to carry out the invention (Article 24 of the IPL); or
- lack of support in the specification, as the claims must be based on the specification, characterising the particularities of the application and defining clearly and precisely the subject matter to be protected (Article 25 of the IPL).
4.4 What is the evidentiary standard to invalidate an issued patent?
Based on the grounds for invalidation mentioned in question 4.3, the party seeking to invalidate a patent must show, through technical evidence (eg, technical opinions prepared by experts from Brazilian or foreign universities), that the patent violates one or more provisions of the IPL.
As the BPTO is a mandatory co-defendant together with the patent owner 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 six months of publication of the grant of a patent in the BPTO's Official Gazette, any third party with a legitimate interest may commence an administrative nullity proceeding before the BPTO (or post-grant proceedings).
The Industrial Property Law does not provide for formal pre-grant opposition, but any interested party may submit to the BPTO prior art references and/or comments regarding patentability from publication until the end of the examination of the application (Article 31 of the IPL). These are similar to European third-party observations. Third parties may also oppose the grant of a patent by submitting documents and information within 60 days of publication of any administrative appeal filed by the applicant against a first-instance decision of 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 the IPL).
4.6 Who can oppose a granted patent?
Any third party with legitimate interest can oppose a granted patent by commencing an administrative nullity proceeding (Article 51 of the IPL) before the BPTO. The nullity administrative proceeding may also be instituted ex officio by the BPTO.
Additionally, the BPTO itself or any third party with a legitimate interest can file an invalidity lawsuit before the federal courts at any time during the term of a patent (Article 56 of the IPL).
4.7 What are the timing requirements for filing an opposition or post-grant review petition?
Third-party observations may be submitted until the end of the examination of the patent application.
Within six months of grant of the patent, an administrative nullity proceeding may be commenced by the BPTO or by any third party with a legitimate interest (Article 51 of the IPL).
In addition, an invalidity lawsuit before the federal courts may 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 the IPL).
4.8 What are the grounds to file an opposition?
Basically, as per Article 50 of the IPL, the invalidity (or nullity) of a granted patent will be declared by the BPTO where:
- any of the legal requirements has not been met (ie, lack of novelty, inventive step or industrial application);
- the specification and the claims do not meet the requirements of enablement (Article 24 of the IPL) or support in the specification (Article 25 of the IPL);
- the subject matter of the patent extends beyond the content of the application as originally filed; or
- any of the essential formalities for grant were not met during prosecution.
4.9 What are the possible outcomes when an opposition is filed?
Any third party with a legitimate interest may commence an administrative nullity proceeding before the BPTO within six months of publication of grant of the patent. This proceeding will be decided by the commissioner of the BPTO, whose decision will terminate the availability of administrative proceedings before the BPTO. Three outcomes are possible:
- The patent is maintained;
- The patent is revoked; or
- The patent is maintained, but with amended claims.
Under the doctrine of judicial review, the final decision of the BPTO is subject to an appeal before the federal courts within five years of its issue, by way of a declaratory lawsuit seeking 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, based on which it will decide the administrative nullity proceeding. This also applies to an invalidity lawsuit: here again, the BPTO – a mandatory co-defendant – will issue its technical opinion, on which the federal judge may decide the case.
Additionally, during an invalidity lawsuit, federal judges may stay the effects of the patent as a preventive or incidental measure. They may also rely on a technical opinion submitted by an unbiased court-appointed expert. The parties may appoint their own technical assistants to provide technical information to the expert. They may also file technical and legal opinions prepared by experts from Brazilian or foreign universities.
In both cases, the plaintiff bears the burden of proof and must prove, through written arguments and documentary evidence, for instance, the lack of fulfilment of the legal requirements or the violation of any section of the Industrial Property Law. The burden of proof is reversed in an infringement lawsuit concerning the violation of a process claim: in this case, the alleged infringer must prove, through a specific judicial ruling, that the product in question was obtained through a different manufacturing process from that protected by the patent (Article 42, Section 2 of the IPL).
4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?
As previously mentioned, a final post-grant review decision of the BPTO may be appealed before the federal courts by any of the parties within five years of issue.
In this regard, the appellant must be able to show that the BPTO's decision is incorrect. To do so, the most common grounds are once again:
- lack of novelty, inventive step or industrial application for an invention (Article 8 of the IPL);
- lack of enablement – that is, lack of a clear and sufficient description, so as to enable a person skilled in the art to carry out the invention (Article 24 of the IPL);
- lack of support in the specifications, as claims must be based on the specification, characterising the particularities of the application and defining clearly and precisely the subject matter to be protected (Article 25 of the IPL); and
- claim amendments made after the request for examination and/or that were not limited to the subject matter initially disclosed in the application (Article 32 of the IPL).
5 Patent enforceability
5.1 What makes a patent unenforceable?
As per Article 43 of the Industrial Property Law (IPL), patents are not enforceable against:
- acts practised by unauthorised third parties privately and for non-profit purposes, provided that they are not detrimental to the economic interests of the patent owner;
- acts practised by unauthorised third parties for experimental purposes relating to studies or to scientific or technological research;
- the 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 patent owner or with its consent;
- for patents relating to living matter, use by third parties for non-profit purposes as the initial source of variation or propagation for obtaining other products;
- for patents related to living matter, use, circulation or commercialisation by third parties of a patented product that has been introduced lawfully on the market by the patent owner or its licensee, provided that the patented product is not used for commercial multiplication or propagation of the living matter in question; and
- acts practised by unauthorised 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 commercialise the patented product after the term has expired (the regulatory review exemption or ‘Bolar' exemption).
A patent is unenforceable if a third party, in good faith, exploited the invention in Brazil prior to the filing or priority date (Article 45 of the IPL). A claim for damages cannot be filed once five years have elapsed since the infringement (Article 225 of the IPL); the timeframe for filing injunctive measures is 10 years (Brazilian Civil Code), although this matter remains unsettled.
5.2 What are the inequitable conduct standards?
There are no provisions relating to inequitable conduct standards under the Industrial Property Law. However, an applicant is expected to act in good faith towards third parties and the Brazilian Patent and Trademark Office (BPTO) throughout the prosecution of its patent application, as well as during infringement or invalidity proceedings.
Furthermore, on a judicial level, the courts have already decided that an applicant or patent owner may be held liable for abuse of its rights if it files a lawsuit with a preliminary injunction request to immediately stop an infringement that it was aware of and tolerated prior to filing. This also applies if the patent owner files an infringement lawsuit against a potential licensee with which it has been negotiating an agreement and which it has incited to use the invention.
5.3 What duty of candour is required of the patent office?
In principle, there is no duty of candour under the Industrial Property Law. Nevertheless, the BPTO must comply with several administrative and constitutional general principles of law, such as:
- legal certainty; and
- public interest.
The BPTO must also follow due process of law during its proceedings. Its acts and decisions carry a presumption of legality and veracity.
An applicant, in turn, is expected to act at least in good faith throughout all administrative proceedings before the BPTO.
6 Patent infringement
6.1 What Constitutes Patent Infringement?
As per Article 42 of the Industrial Property Law( IPL), the patent owner has the right to prevent unauthorised third parties from manufacturing, using, offering for sale, selling or importing a product that reproduces the subject matter of the patent, or a process or product directly obtained from a patented process.
With regard to indirect infringement, third parties can be prevented from contributing to the infringements of others (Article 42, Section 1º of the IPL).
The unauthorised 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 the IPL). Furthermore, such crimes are considered to have been committed when the infringement:
- does not affect all claims of the patent; or
- is restricted to the use of means equivalent to the subject of the patent (Article 186 of the IPL).
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 (see further question 8.2).
6.2 Does your jurisdiction apply the doctrine of equivalents?
Article 186 of the IPL states that indirect infringement may be established 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. However, 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 such as the tripartite test.
6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?
Infringing acts must take place in the Brazilian territory for a supposed infringer to be found liable and to answer for the infringement before the Brazilian state courts.
6.4 What are the standards for wilful infringement?
There are no provisions for wilful infringement under the Industrial Property Law.
6.5 Which parties can bring an infringement action?
The patent owner may bring an infringement lawsuit. A licensee – exclusive or non-exclusive – may also bring an infringement action if it is authorised to do so under a written licensing agreement. Distributors and any party that has an interest in defending a patent may file an infringement lawsuit, provided that they have been given specific powers to do so by the patent owner.
6.6 How soon after learning of infringing activity must an infringement action be brought?
As mentioned in question 5.1, a claim for damages as a result of patent infringement must be filed within five years of the last infringing act (Article 225 of the IPL). Injunctive measures may be sought within 10 years of the last infringing act (Brazilian Civil Code), although this deadline remains unsettled before the courts and in doctrine.
Furthermore, due to the requirements of urgency and to increase the likelihood of successfully obtaining a preliminary injunction, an infringement lawsuit should be filed as soon as the patent owner learns of the infringement.
6.7 What are the pleading standards to initiate a suit?
The Brazilian patent regime does not establish specific pleading standards to initiate an infringement lawsuit, other than those applicable in other civil actions.
Nevertheless, there must exist a valid patent title and cause of action (ie, evidence of actual or potential infringement, such as the manufacture or sale of infringing products). The plaintiff must outline in the complaint the facts of the case, its legal standing and the request for remedies (eg, preliminary and permanent injunctions, specific sanctions and damages). The infringement analysis should be clearly stated and supported by technical reports issued by renowned experts from Brazilian or foreign universities, as well as legal opinions from renowned scholars. It is vital to gather this type of documentary evidence, given the technical and scientific difficulties involved in a patent infringement lawsuit. Such technical reports will also significantly increase the chances of successfully obtaining a preliminary injunction.
In Brazil, plaintiffs usually request an ex parte preliminary injunction to seek the immediate cessation of the infringement. Such order is subject to specific requirements:
- the likelihood of success on the merits; and
- the risk that the plaintiff will suffer irreparable harm if no action is taken before a final decision on the merits.
The requested injunctive measure must also be reversible.
6.8 In which venues may a patent infringement action be brought?
The Brazilian legal system is a bifurcated system. Enforcement is a matter of state jurisdiction, whereas invalidity lawsuits are filed before federal courts (due to the status of the Brazilian Patent and Trademark Office as a co-defendant, when it is not the plaintiff).
Patent infringement lawsuits are filed before the state courts, which are divided into civil and criminal courts. As the violation of 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 vast majority of patent infringement suits. Both have district courts that specialise in commercial disputes – including patent infringement suits, in the case of the State Court of Rio de Janeiro. The Federal Court of Rio de Janeiro also has courts that specialise in IP matters and hear patent invalidity cases.
Additionally, as mentioned in question 2.2, patent rights may be enforced through border measures. The customs authorities can seize counterfeit goods at the time of clearance, following which the patent holder may file a judicial complaint seeking seize and/or destruction of the goods, as well as a preliminary injunction to block such goods at the border. To be successful in practice, such measures must be accompanied by an expert technical opinion establishing the infringement.
6.9 What are the jurisdictional requirements for each venue?
A patent infringement suit may be filed either with the court at the place where the infringer has its domicile or with the court at the place where the infringement occurred. Usually, a plaintiff will request cessation of the infringement and payment of damages, as well as an ex parte preliminary injunction to cease the infringement until a decision on the merits is rendered.
In contrast to a civil action, a criminal action begins with a preliminary search and seizure to collect evidence of the infringement. This proceeding will be conducted by two court-appointed experts. Once the expert report has been submitted and approved by the judge, the patent owner has 30 days in which to file a criminal complaint and commence a criminal proceeding. As this type of search and seizure is less complex and more straightforward than a proceeding to gather preliminary evidence in a civil action, criminal search and seizures are often used before filing a civil action.
6.10 Who is the fact finder in an infringement action?
The trial judge is the fact finder at 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.
6.11 Does the fact finder change based on venue?
No. However, at the appeal level – which involves a full review of all arguments, facts and evidence analysed and decided by the trial court – the appeal will be decided by a panel of three judges.
6.12 What are the steps leading up to a trial?
Before filing a complaint, the plaintiff may serve the defendant with a cease and desist letter. It may also take preliminary measures to preserve evidence. Once the complaint is filed, the defendant will be directed to present its response within 15 days. The plaintiff must then reply to the defendant's response within a 10-day period.
A request for a preliminary injunction is usually considered within five days of filing of the complaint. Having clarified any procedural irregularities, the parties may state the evidence they wish to produce.
A conciliatory hearing usually takes place after that, in which the parties attempt to settle the case. Given the technical challenges of patent infringement suits, the trial judge will usually appoint an unbiased expert. The parties may also appoint their own technical assistants. Once the court-appointed expert has submitted his or her technical opinion, the parties' technical assistants may present their opinions in response to the expert's conclusions.
A final hearing, which is not mandatory and is rare in practice, might then take place. At this hearing, the trial judge will listen to the deposition of the parties and their witnesses. The court-appointed expert and the parties' technical assistants may be required to appear at the hearing for cross-examination.
After this hearing, the judge may either render a final decision or order the parties to submit their final briefs, following which a final decision on the merits will be rendered. The timeframe for obtaining a first-instance decision is currently two to four years.
6.13 What remedies are available for patent infringement?
The most common civil remedies available for patent infringement are:
- a preliminary injunction to cease the infringement under penalty of a daily fine, as well as search and seizure orders;
- a permanent injunction to cease the infringement under penalty of a daily fine;
- the seizure and/or destruction of products and materials involved in the infringement;
- removal of the infringing products from the market; and
- the payment of damages for lost profits and moral damages.
Criminal remedies include preliminary criminal search and seizure measures, imprisonment and fines.
6.14 Is an appeal available and what are the grounds to appeal?
There are several types of appeal under 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:
- an interlocutory appeal against a preliminary first-instance decision (eg, preliminary injunctions or trial decisions issued during the course of the lawsuit); and
- an appeal, which may be filed against a first-instance decision on the merits, and in which all issues discussed at first instance will be considered by the appeal court.
In both cases, the appeal court can grant suspensive effect to the appeal. If the appeal is unsuccessful, the subject of the decision (eg, a preliminary injunction or decision on the merits) may be enforced immediately. Otherwise, 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 of the appeal court is contrary to the ordinary law or to the Federal Constitution, a party can file a special appeal to the Superior Court of Appeals or an extraordinary appeal to the Supreme Court, respectively.
7.1 Is discovery available during litigation?
Brazilian procedural law does not provide for pre-trial discovery, as is available in common law countries.
7.2 What kinds of discovery are available?
There is no discovery in Brazil. Nevertheless, one party can ask the court to order the other to produce specific evidence.
The plaintiff can also ask the court to facilitate the early production of evidence by way of a preliminary search and seizure to gather relevant documents and infringing products.
In the pleadings phase, the plaintiff will produce evidence in the initial complaint (essentially, documentary evidence in the form of technical opinions prepared by experts from Brazilian or foreign universities). The defendant will produce documentary evidence in its response to the complaint.
Other types of evidence that may be produced include:
- oral evidence;
- personal depositions of the parties and witness statements;
- expert evidence;
- court inspections; and
- any other evidence that the judge considers appropriate to the case.
With regard to expert evidence, given the technical and scientific challenges of patent infringement suits, trial judges usually appoint an unbiased court expert. The 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 at the hearings.
7.3 Are there any limitations to the amount of discovery allowed?
In principle, under Brazilian procedural law, there are no limitations to the production of evidence, since the plaintiff may submit all legal and morally legitimate evidence that is available.
8 Claim construction
8.1 When during a patent infringement action are claim terms defined by the tribunal?
The trial court will usually work to define the claim terms during the expert examination phase of the proceedings. This definition of the claim terms will be finalised once the trial judge renders a first-instance decision on the merits of the case.
Given the technical and scientific challenges of patent infringement suits, judges typically appoint an unbiased court expert to conduct an examination and provide an opinion on the technical aspects of the case, especially with regard to claim construction.
8.2 What is the legal standard used to define claim terms?
There is no legal standard for defining claim terms. In practice, however, infringement is commonly determined by way of:
- an analysis of the patent claims, in order to define the scope of protection; and
- a comparison between the allegedly infringing product and the properly construed claim chart.
The first step in interpreting the claims requires the application of legal standards:
- The extension of the protection conferred by a patent will be determined on the basis of the content of the claims, interpreted in light of the specification and drawings (Article 41 of the Industrial Property Law (IPL)); and
- The claims must be based on the specification, characterising the particularities of the application and defining clearly and precisely the protected subject matter (Article 25 of the IPL)
Patents in Brazil are also governed by the Brazilian Patent and Trademark Office's (BPTO) resolutions and guidelines, which require that the claims be structured as ‘Jepson claims'. Such claims are structured in the following order:
- a preamble, enumerating all elements or steps of a combination claimed that are conventional or known;
- an expression of connection – for instance, ‘characterised by'; and
- a body containing all elements, steps and/or relationships that constitute part of the combination claimed and that the inventor considers new.
The second step of the analysis involves the application of the ‘all elements' rule – that is, for a patent to be infringed, the allegedly infringing product or process must have all limitations of the ‘characterising part' of at least one of the independent claims of the concerned patent.
8.3 What evidence does the tribunal consider in defining claim terms?
When defining claim terms, the trial judge will take into consideration the technical opinion of the non-biased court-appointed expert, who will also answer questions presented by the parties and by the judge. The court-appointed expert, in turn, may use other documents; but his or her opinion is usually based on the documents submitted by the parties and their respective technical assistants.
In an invalidity lawsuit before the federal courts, the judge may rely on the court-appointed expert technical opinion, as well as on the BPTO's analysis of the case.
9.1 Are injunctions available?
Yes. Both preliminary and permanent injunctions are available, allowing trial court judges to immediately order:
- the defendant to stop using or selling the patented invention;
- the conduct of searches and seizures; and/or
- a recall of the infringing products.
9.2 What is the standard to obtain an injunction?
The trial judge will grant preliminary injunctions upon prima facie evidence of:
- the likelihood of prevailing on the merits; and
- the risk of irreparable harm.
Hence, a patent owner should not wait too long before filing an infringement suit or requesting a preliminary search and seizure. Otherwise, the trial judge might consider that there is no urgency to grant an ex parte preliminary injunction. Additionally, the injunctive measure requested must be reversible.
An injunction must therefore be sought at the very outset of a lawsuit. This is the main reason why the technical evidence must be well prepared before filing (see question 6.7).
A preliminary injunction may be granted without hearing the defendant and may be subject to a daily penalty of a fine should the defendant fail to comply with its terms. In some cases, the trial judge may order the plaintiff to post a bond when granting the preliminary injunction.
9.3 Are damages available?
Yes, damages are available.
9.4 What types of damages are available?
As per Article 209 of the Industrial Property Law (IPL), the aggrieved party is entitled to recover losses and damages in compensation for losses caused by the 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 the IPL). The plaintiff is also entitled to compensation for damages caused between the date of publication of the patent application and the date of grant of the patent.
Lost profits will be determined based on one of the following criteria (ie, the most favourable to the injured party):
- the benefits that would have been gained by the patent owner if the violation had not occurred;
- the benefits gained by the infringer; or
- the remuneration that the infringer would have paid to the patent owner for a licence that would have legally permitted it to exploit the patent (Article 210 of the IPL).
The plaintiff can also request indemnification for moral damages, if it can prove that its business or reputation has been adversely affected by the infringement. However, moral damages are rarely granted in patent infringement suits.
9.5 What is the standard to obtain certain types of injunctions?
See question 9.2.
9.6 Is it possible to increase or multiply damages due to a party's actions?
There are no punitive damages in Brazil and the courts do not tend to apply them.
9.7 Are sanctions available?
Yes. See questions 6.13 and 9.4.
9.8 What kinds of sanctions are available?
See questions 6.13 and 9.4.
9.9 Can a party obtain attorneys' fees?
Yes, at least in part. The prevailing party may recover attorneys' fees and a proportion of the court fees, as well as other expenses incurred during the course of the lawsuit (eg, the fees of the court-appointed expert).
9.10 What is the standard to obtain attorneys' fees?
Attorneys' fees are limited to between 10% and 20% of the total damages recovered by the plaintiff.
10.1 What patent rights can a party obtain through a licence?
As per Article 61 of the Industrial Property Law (IPL), a patent applicant or patent owner may grant a licence to a licensee to exploit the patent, such as by manufacturing, using, selling or offering for sale the patented product. The licensee may be invested by the patent owner with all powers to act in defence of the patent. A licence may be exclusive or non-exclusive.
10.2 What limits can a patent owner impose on a licence?
A patent owner can impose several limitations on a licence – for example, by:
- limiting the scope of the licence to the applicable territory and duration;
- offering an exclusive or non-exclusive licence; and
- restricting the licensee's right to sub-license the patent.
As per Article 63 of the IPL, any improvement to a licensed patent belongs to the party that effects it; the other contracting party is guaranteed preferential rights to a licence in this regard.
Licence agreements must be registered with the Brazilian Patent and Trademark Office (BPTO) in order to:
- be effective against third parties;
- allow for the remittance of royalties abroad; and
- allow for the tax deduction of amounts paid as royalties (Article 211 of the IPL).
It is important to mention that when analysing a licensing agreement, the BPTO used to limit its terms, especially with regard to the duration, amount of royalties and payment methods. For example, the BPTO would invoke tax legislation that limits the tax deductibility of royalties (Rule 436/58) to apply the same rule to the remittance of royalties abroad. The rule provides for the application of percentages fixed at between 1% and 5% of the revenue generated through exploitation of the licensed technology. However, such intervention has become less frequent since the issue of BPTO's Rule 70/2017, which has restricted its interference to formal aspects and general conditions of admissibility for registration of the licence.
11.1 Are there any limits on patent protection due to antitrust laws?
In principle, there are no limits on patent protection due to antitrust laws, provided that the patent rights are exercised without abuse. For instance, the Brazilian Competition Authority (CADE) has decided a complaint involving the supposed abuse of standard-essential patents by way of ‘sham litigation' proceedings.
More recently, CADE decided a landmark case involving antitrust violation and industrial property in Brazil. The case lasted more than 10 years and involved the alleged abuse of industrial design rights by automakers in 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.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.