BRAZIL Law and Practice Contributed by: Fabiano de Bem da Rocha, Gustavo Bahuschewskyj Correa, Kamille Trindade Machado and Milton Lucídio Leão Barcellos, Leão Intellectual Property
Brazilian Supreme Court’s decision in ADI 5.529 and subsequent legislative changes, the former rule that guaranteed a minimum term counted from grant was revoked; Brazil does not have any PTA/PTE/SPC sys- tem. 1.4 Ownership, Assignment and Licensing As a rule, the inventor (or the inventor’s heirs/succes- sors) is entitled to apply for a patent, but ownership may belong to an assignee or to the employer/service recipient depending on the employment or service relationship and the circumstances of the invention. Brazil has specific statutory rules for inventions and utility models made by employees or service provid- ers (Articles 88–93 of the Brazilian Industrial Property Law 9279/96). Assignments and licences should be made in writ- ing. While private instruments may be valid between the parties, recordal/annotation with INPI is typically required for the assignment or licence to be effec- tive against third parties and for certain effects (eg, remittance of royalties with tax refund possibilities and enforceability in some contexts). 1.5 Patent Infringement and Defences Patent infringement is assessed by comparing the accused product/process with the patent claims. Infringement may be literal (all claim elements are met) or, in appropriate cases, by equivalence. Contributory/ indirect infringement concepts may also arise depend- ing on the conduct (eg, supplying means or inducing infringement), but the analysis is case by case. Common limitations/defences include (among others): • prior user rights; statutory exceptions (eg, acts for experimental purposes); and • exhaustion in appropriate circumstances. Brazil also provides for compulsory licensing in spe- cific scenarios set out in the Industrial Property Law. Fair, reasonable and non-discriminatory (FRAND)-type arguments are typically raised in standard-essential patent disputes as part of the broader proportionality/ competition and contractual analysis rather than as a standalone statutory defence. The Brazilian Com- petition Authority ( Conselho Administrativo de Defesa
Econômica – CADE) recently issued its Contribuições do CADE – Patentes Essenciais (CADE, July/2025). 1.6 Patent Enforcement and Remedies Brazil has a bifurcated system: patent infringement actions are generally filed in state courts, while patent invalidity actions must be filed in the federal courts, with INPI participating when it is not the plaintiff. Par- allel infringement and validity proceedings are there- fore common. Preliminary (including potentially ex parte) and per- manent injunctions may be available where the claim- ant shows likelihood of success and a risk of harm, subject to the general civil procedure requirements and reversibility considerations. Even though all the Brazilian States Courts follow the same IP procedural law, some Brazilian State Courts could be more willing to grant preliminary injunctions than others. Remedies for infringement may include cessation orders, sei- zure/recall measures in suitable cases and damages (typically assessed based on the circumstances of the infringement and evidentiary record). Courts may also award attorneys’ fees and costs pursuant to Brazilian procedural rules. 2. Trade Marks 2.1 Legal Framework and Protectable Signs Trade mark protection in Brazil is governed primar- ily by the Brazilian Industrial Property Law (Law No 9,279/1996). Brazil adopts a registration-based sys- tem, meaning that exclusive rights over a trade mark are acquired upon registration. The law allows the protection of word marks, figurative marks, composite (mixed) marks and, under certain conditions, three-dimensional marks, provided they are distinctive and non-functional. Non-traditional marks such as sounds, scents and tastes are not currently registrable in Brazil. Colours alone are also not protectable unless arranged in a distinctive and specific manner. As a general rule, unregistered marks are not enforce- able; however, Brazilian law recognises limited protec- tion for prior good-faith users. In addition, well-known
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