BRAZIL Law and Practice Contributed by: Ana Paula Affonso Brito and Maria Eduarda de O Borrelli Junqueira, Montaury Pimenta, Machado & Vieira de Mello
the date the BPTO’s rejection was released in the Official Gazette. Estimated Timeframe of Service of an Action and Lawsuit Defendants are generally served to acknowledge the filing of a lawsuit via post or by the clerk of the court. After confirmation of the defendant’s acknowledgement is submitted in the court’s files, the defendant has a 15 business-day deadline to present its defence, under penalty of default. After that, the plaintiff will be summoned to submit its response to the defence within the same deadline, and the judge will establish the controversial aspects of the lawsuit to be analysed, appointing the court’s expert who will be responsible for analysing the technical aspects of the lawsuit (the patent infringement or the invalidity), and preparing the technical report. Once the technical report is submitted in the court’s files, the parties have a common 15 business-day deadline to present their diver - gent/convergent opinions and the court expert may be summoned to present potential clarifi - cations or amendments to their report. After the conclusion of the technical evidence phase, the judge understands that the lawsuit is sufficiently developed to be judged, but there is no binding deadline for the rendering of the decision on the merits. Based on recent case law, it is possible to affirm that once the technical evidence phase is concluded, a decision on the merits may take approximately two to six months to be rendered. 1.6 Requirements to Bring Infringement Action According to a recent decision from the STJ, an infringement action can only be filed once the patent has been granted, since it is the regis - tration itself that guarantees its owner the right
to prevent a third party from producing, using, offering for sale or importing the patented prod - uct without consent, as set forth in Article 42 of the Brazilian Industrial Property Act. The reason for this is that, before the patent application is granted, it only exists as a mere expectation of rights, as there is no way of ensuring that the patent application will definitely be granted. Thus, although Article 44 of the Brazilian Indus - trial Property Act sets forth that compensation may be claimed by the patentee, including in the period between the date of publication of the application and the date the patent is granted, the procedural interest will only exist once the BPTO renders an administrative act effectively granting the patent. 1.7 Pre-Action Discovery/Disclosure The Brazilian Code of Civil Procedure does not foresee pre-action discovery/disclosure. However, according to Article 396 of the Code, the judge may order the parties to disclose doc - uments and evidence. If a party refuses to com - ply with the exhibition order without an accept - able reason, a search and seizure order can be issued. There is no US-style discovery in Brazil. In other words, the parties have no right to seek documents from the other side before trial. The evidentiary phase is judge-oriented, as judges have discretion to order the production of any evidence that they deem appropriate, or deny that which they consider irrelevant to the case. 1.8 Search and Seizure Orders Search and seizure may be among the requests made by the plaintiff in an infringement action. A patentee can request such order on a prelimi - nary injunction basis, to be corroborated on the
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