BRAZIL Law and Practice Contributed by: Ana Paula Affonso Brito and Maria Eduarda de O Borrelli Junqueira, Montaury Pimenta, Machado & Vieira de Mello
for deducing the unfoundedness of requests in a related infringement lawsuit. Staying of the Infringement Proceeding Article 313, V(a) of the Brazilian Code of Civil Procedure establishes that the staying of a law - suit may occur where there is a risk of conflict - ing decisions being rendered by different courts – that is, when the judgment of a certain lawsuit depends on the outcome of another case, or on the declaration of the existence or non-existence of a legal relationship that is the main subject of a parallel discussion. It is then necessary to assess whether the outcome of the subordinating issue (which, in this case, is the invalidity action) will necessar - ily influence the decision on the subordinated issue (ie, the infringement action). In this case, the possibility of contradictory decisions being rendered by both the state and federal courts is the main legal basis for suspending the proceed - ings until the case understood as subordinating is decided, as it can happen that at the same time a patent is declared null by the federal court (producing ex-tunc and retroactive effects), the state court may declare the existence of a pat - ent infringement, meaning that conflicting deci - sions have been generated by the two courts. However, if the decision on the patent’s invalidity is upheld by the panel of judges in the second instance, the infringement lawsuit in the state court will have no purpose, as the patent will no longer exist in the legal sphere. This is why it is not unusual for judges to stay infringement actions when there is an ongoing nullity action before another court, based upon the provision of Article 313, V(a) of the Brazil - ian Code of Civil Procedure. However, it must be mentioned that there are judges who prefer to stay the infringement action only when a rel -
evant development in the nullity action occurs (for instance, a technical report concluding that the the patent is invalid, or a first instance deci - sion on the merits of suspending the effects of the patent or declaring the patent’s invalidity), aiming to prevent alleged infringers from filing an invalidity action, with no relevant arguments, simply to delay the infringement action’s conclu - sion. Exhaustion of the Administrative Sphere According to Brazilian case law, it is not nec - essary to wait for the administrative sphere’s exhaustion to file a nullity action. As long as the patent is granted by the BPTO in the first instance, an interested party can file a nullity action before a federal court, even if an admin - istrative nullity procedure is pending analysis by the BPTO in the second instance. Should the administrative nullity procedure be granted, and the patent be declared null by the BPTO, the nul - lity action will lose its purpose and consequently be shelved. 1.5 Timing for Main Proceedings on Infringement/Validity Judicial Statutory Deadlines As to an infringement action combined with a request for material and moral damages, the plaintiff must file this within five years from the date of acknowledgement of the infringement, according to Article 225 of the Brazilian Indus - trial Property Act. If the infringement is continu - ous, the five-year term will be renewed daily. As to an invalidity action, the plaintiff may file this at any time during the term of the patent, according to Article 56 of the Brazilian Industrial Property Act. However, if the invalidity action challenges the rejection of a patent application, the action must be filed within five years from
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