BRAZIL Law and Practice Contributed by: Eduardo Hallak, Juliana Neves, Jorge Tinoco and Lívia Dias, Licks Attorneys
1.5 Timing for Main Proceedings on Infringement/Validity
depending on the disposition of the court and the atti ‑ tude of the parties. Usually, it takes ten to 12 months (for infringement cases) or 14–18 months (for nullity cases) from filing to the beginning of the technical examination. Conversely, if the parties are combative and the court is not as diligent, it may take longer than two years before expert examination is started. Regarding evidence, the Brazilian CPC authorises par ‑ ties to submit evidence at any time during the lawsuit, as long as they are able to prove that the evidence is new or that it could not be submitted at a prior stage. On average, the State Court of São Paulo (which han ‑ dles nearly 70% of all patent infringement cases in Brazil) takes nearly four years from the filing of the lawsuit to reach a final decision. The Federal Court of Rio de Janeiro, which handles nearly 90% of all nullity actions filed in Brazil, takes nearly five years to issue a decision on the merits. 1.6 Requirements to Bring Infringement Action A patent infringement lawsuit may only be filed once a patent has been granted by the BRPTO. If the pat ‑ ent is not yet granted, the applicant does not have a legally enforceable right, only the “expectation of a right”. As such, applicants must wait until the letters patent is granted before enforcement may occur. Nevertheless, when an application is eventually grant ‑ ed, Article 44 of the BPS allows the patentee to claim retroactive damages for infringement that took place during the patent’s pendency (ie, when it was still an application), limited by the five-year statute of limita ‑ tions. In infringement lawsuits involving process patents, there may be a reversal of the burden of proof. In such cases, the infringer must prove that their process does not infringe the subject matter of the patent. Alternatively, the judge may choose to reverse the bur ‑ den of proof pursuant to Article 373, paragraph 1, of the CPC. This may occur when the judge is convinced that the burden of proving infringement would place undue hardship on the patentee and the defendant would be more easily able to prove non-infringement.
For infringement lawsuits, plaintiffs are subject to a five-year statute of limitations, as provided under Arti ‑ cle 225 of the BPS. On the other hand, a claim for patent nullity may be brought at any time during the term of the patent, according to Article 56 of the BPS. Concerning the procedural means for the service of alleged infringers to a lawsuit, the same provisions indicated in 1.3 Preliminary Injunction Proceedings also apply here. Usually, service occurs through postal services with a notice of receipt. If the postal service is not able to reach the infringer, the plaintiff may request other means to effect service – eg, by conducting ser ‑ vice through a bailiff or through public notice. In nullity lawsuits, service tends to be easier. Pursu ‑ ant to Article 217 of the BPS, patentees established abroad must keep an attorney in Brazil with sufficient powers to be served in the patentee’s stead. This allows prospective nullity plaintiffs to direct their ser ‑ vice to the attorney residing in Brazil instead of rely ‑ ing on the postal service or other means (eg, letters rogatory). When evidence of service (eg, notice of receipt) is attached to the dockets of the lawsuit, the clock starts ticking for the defendant to present their statement of defence. In infringement lawsuits, the deadline is 15 business days. In nullity lawsuits, the deadline is longer – 60 calendar days (or 45 business days at Federal Courts for the 2nd Circuit). In nullity lawsuits, after the patentee presents their statement of defence, the BRPTO is summoned to evaluate the submissions of the nullity claimant and the defendant (ie, the pat ‑ entee) and to present a statement, within 30 busi ‑ ness days, on whether the patent should be upheld or revoked. Hearings are not common in Brazilian patent litiga ‑ tion. Infringement and nullity cases mainly involve the production and assessment of documents submitted by the parties and technical evaluations conducted by a court expert. From the start of litigation to the start of expert examination, timelines may vary widely
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