BRAZIL Law and Practice Contributed by: Eduardo Hallak, Juliana Neves, Jorge Tinoco and Lívia Dias, Licks Attorneys
1.7 Pre-Action Discovery/Disclosure There is no procedure such as discovery/disclosure in Brazil, but Brazilian law admits the filing of an action for early production of evidence to ensure the integrity of the evidence to be used in the main action. In this case, Article 381 of the CPC enables the anticipated production of evidence when: • there is a well-founded fear that it will become impossible or very difficult to verify certain facts pending the action; • the evidence to be produced is likely to enable self-composition or other appropriate means of conflict resolution; or • prior knowledge of the facts may justify or prevent the filing of an action. 1.8 Search and Seizure Orders Discovery proceedings are not available under Brazil ‑ ian law. However, a patentee may request a search and seizure order from a court to preliminarily halt infringing activity, and to gather evidence for evaluat ‑ ing infringement. Search and seizure requests are usually formulated as preliminary injunction requests; the same require ‑ ments for granting explained in 1.3 Preliminary Injunc- tion Proceedings also apply here. It should also be noted that such request may be presented within the main action or as an independent early production of evidence. Considering that patent infringement is a crime under Brazilian law, patentees may also seek search and seizure orders from criminal courts. Criminal judges may be more willing to allow the seizure of infringing products, as the Criminal Procedure Code requires the prior investigation of the infringing product to allow the later filing of criminal charges. Search and seizure orders are usually assessed and granted ex parte. After the court issues the order, a bailiff is designated to carry it out, and the parties must work alongside the bailiff to secure and arrange transportation of the seized materials. Although rare, a judge may also designate a court expert to accom ‑ pany the plaintiff and bailiff on the search and conduct an on-site examination of the infringing materials.
The evidence produced from a lawfully granted search and seizure is usable in national and foreign proceed ‑ ings. So long as the applicant proves that the evi ‑ dence has been legally obtained in Brazil and the for ‑ eign procedure allows the use of such evidence, there should be no problem in using it in judicial or arbitral proceedings abroad. 1.9 Declaratory Relief Declaratory relief is allowed under Brazilian law. Pur ‑ suant to Article 5 (XXXV) of the Brazilian Constitution, no statute may remove the violation (or threat of viola ‑ tion) of a right from the examination of the Judiciary. In other words, if the rights of a person are under threat of violation, this person may access the court system. Furthermore, according to Article 19 of the CPC, a plaintiff’s legitimate interest may be limited to a dec ‑ laration of the (in)existence of a legal relationship or the way in which the relationship must be carried out. This would include a declaration of non-infringement or an “arrow” declaration, for example. To justify standing, it is important for the party seeking declaratory relief to demonstrate that they are legiti ‑ mately interested in attaining the declaration sought. For example, a party is seeking a declaration of non- infringement should demonstrate that they were tar ‑ geted with a cease-and-desist letter or a notice of infringement, or even that their clients were contacted by the patentee regarding possible infringement. 1.10 Doctrine of Equivalents Article 186 of the BPS specifically states that a patent is infringed “even if the violation does not affect all the claims of the patent or if it is restricted to the use of means equivalent to the subject matter of the patent”. This provision incorporates the Doctrine of Equiva ‑ lents into Brazilian law. Although there are no statuto ‑ rily set criteria for a finding of infringement under the “equivalence” doctrine, courts often use tests found in foreign case law to reach their conclusions; common examples are the US’s three-part test (the Graver Tank standard) or Germany’s “obvious equivalence” tests (the Schneidmesser standard). 1.11 Clearing the Way Although there is no legal requirement to clear the way ahead of a product’s launch, doing so is certainly
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