BRAZIL Law and Practice Contributed by: Ana Paula Affonso Brito and Maria Eduarda de O Borrelli Junqueira, Montaury Pimenta, Machado & Vieira de Mello
Montaury Pimenta, Machado & Vieira de Mello Av. Almirante Barroso, 139-7th Floor
Rio de Janeiro ZIP 20.031-005 Brazil Tel: +55 21 2524 0510 Email: montaury@montaury.com.br Web: www.montaury.com.br
1. Life Sciences and Pharma/ Biopharma Patent Litigation 1.1 Claimants/Plaintiffs to an Action The Brazilian Code of Civil Procedure Article 17 of the Brazilian Code of Civil Proce - dure (the “Brazilian Civil Code” or the “Code”) provides that in order to file a lawsuit, it is nec - essary to demonstrate legal interest and legiti - macy. Thus, an action for patent infringement must be filed by the patentee and in the case of co-ownership, the provisions of the Civil Code will apply. Since Brazilian law does not provide further details for the co-ownership of patents, other than defining that a patent application may be filed by a group of inventors, most of the rules established between the co-owners are guided by the Brazilian Civil Code. What is not statuto - rily required, may be required by contract. Con - tractual dispositions are therefore strongly rec - ommended in Brazil, due to the lack of detailed provisions in the Industrial Property Act. The Brazilian Civil Code is applied subsidiarily, as the law on co-ownership of a patent is analo - gous to the law onco-ownership of real estate/
property, which sets forth that if two or more people own an undivided thing, each may exer - cise possessory acts over it, as long as they do not exclude the other co-owners. Not all joint owners therefore have to join as plaintiffs in patent enforcement actions, and each owner has the right to enforce its prop - erty independently. Such provision may not be changed by contract, since this would be an ownership limitation rule. However, other provi - sions may be altered by contract. The Brazilian Industrial Property Act As to licensees, the Brazilian Industrial Property Act (Law #9.279/96) foresees in Articles 61 and 62 that patentees can celebrate exploitation licensing agreements with third parties, and, in this case, the licensee may be invested with all powers to act in defence of the patent. This includes the extraordinary right to figure as a plaintiff in an infringement action, even without joining the patentee as a co-plaintiff. In the specific scenario in which the patentee does not figure as a co-plaintiff, it will not be nec - essary to figure as a defendant either – as this position will be solely occupied by the alleged
20
CHAMBERS.COM
Powered by FlippingBook