BRAZIL Law and Practice Contributed by: Eduardo Hallak, Juliana Neves, Jorge Tinoco and Lívia Dias, Licks Attorneys
infringement (state) judges are more open to granting PI requests than nullity (federal) judges. Although Brazil offers a wide array of interim relief for litigants, it is important to say that the life sciences industry has a few peculiarities. One example is the availability of the Bolar exemption for parties look ‑ ing to attain regulatory approval in Brazil or abroad. Therefore, although the filing of a Market Authorisa ‑ tion Application (MAA) may be an early indication of infringement acts, it is not the definitive factor when relating to infringement. In regard to the procedural aspects of the PI request, the court may summon the defendant to reply to such request, or may decide on the PI request before hear ‑ ing the defendant. When the PI is requested upon fil ‑ ing the lawsuit, defendants should be personally sum ‑ moned by a service letter, which may be delivered within a few days through the Brazilian postal system or through a bailiff; alternatively, the service letter may be personally delivered by the plaintiff, when author ‑ ised by the judge, which is usually faster than the court service. As the timeframe for the effectiveness of the defendant’s summoning may vary depending on the method of delivery of the service letter, the deadline for response will only count from the date the receipt of acknowledgement of the service letter is attached to the case dockets. When served to respond to a PI request, the defend ‑ ant may present whatever evidence is available to allege that no infringement has occurred. Consider ‑ ing that the plaintiff must prove their “likelihood” of success, defendants generally do not have to prove conclusively that they are not infringing; it should be enough to demonstrate that it would be reasonable to believe that no infringement is taking place. Under Brazilian law, protective letters are not allowed as an attempt to circumvent PI requests. Neverthe ‑ less, the CPC provides that, if a final decision on the merits reverses the decision that granted the prelimi ‑ nary injunction, the party who benefitted from the PI must compensate the defendant for any damages caused. See 5.4 Damages for more information.
Prospective infringement defendants may also take other action to mitigate the possibility of being tar ‑ geted by a PI, such as: • filing a pre-emptive non-infringement lawsuit to obtain interim relief ensuring the continuation of commercial activities while the matter of infringe ‑ ment is litigated; or • initiating a nullity lawsuit with a request for prelimi ‑ nary injunction staying the effects of the patent – either before the whole market (erga omnes effects) or strictly between the litigating parties (inter partes effects). 1.4 Structure of Main Proceedings on Infringement/Validity Brazil adopts a bifurcated system of patent lawsuits. Infringement claims are brought before state courts and nullity claims are brought before federal courts. Article 57 of the BPS requires the BRPTO to be a party to lawsuits with independent nullity claims. Conversely, the participation of the BRPTO is not necessary if the issue of patent nullity is raised as a matter of defence (see 1.1 Claimants/Plaintiffs to an Action ). If a nullity claim is brought through an inde ‑ pendent lawsuit before a federal court, a finding of nullity will produce widespread effects removing the patent retroactively – as if it had never existed in the first place. If the issue of patent nullity is raised by means of defence, patent nullity may only produce effects limited to the parties in litigation; other parties are still subjected to the patent’s effects. According to Article 56 of the BPS, patent nullity may be claimed in federal court at any time after grant (within the patent term). If patent nullity proceedings are ongoing before the BRPTO, the nullity lawsuit may take precedence and stay the administrative proceed ‑ ings before the BRPTO if there is a judicial decision ordering such stay or if the BRPTO itself finds it appro ‑ priate to stay the administrative proceedings while the lawsuit is decided.
20 CHAMBERS.COM
Powered by FlippingBook