BRAZIL Law and Practice Contributed by: Ana Paula Affonso Brito and Maria Eduarda de O Borrelli Junqueira, Montaury Pimenta, Machado & Vieira de Mello
merits, with the aim of stopping continuation of the infringing practices by the defendant. 1.9 Declaratory Relief Declaratory actions are available in the Brazilian legal system, according to Articles 19 and 20 of the Brazilian Code of Civil Procedure. Such pro - ceedings are appropriate whenever the plaintiff aims to dispel doubts and solve disagreements about the existence, non-existence and way of being of a legal relationship. Thus, declara - tions of infringement or non-infringement may be questioned by plaintiffs and granted by the Brazilian state courts. 1.10 Doctrine of Equivalents The doctrine of equivalents (DOE) is applicable in Brazil according to Article 186 of the Brazilian Industrial Property Act. Although the law does not set forth any statutory standards to assess DOE, discussions in lawsuits in Brazil tend to rely on the tripartite equivalence test, inspired by the international doctrine. 1.11 Clearing the Way There is no obligation established by Brazilian regulations to “clear the way” ahead of a new product launch. However, it is strongly advisable to perform a freedom-to-operate (FTO) analy - sis before starting any developments on a new product. Failure to clear the way could pose a high risk to the company, since the existence of a patent covering the product intended to be launched could lead to time and financial invest - ment loss, not to mention the potential risk of an infringement lawsuit. 1.12 Experts According to Article 464 of the Brazilian Code of Civil Procedure, a court expert will be appointed by the judge whenever proof of the facts alleged by the plaintiff depend on special technical
knowledge. Thus, given the technical complex - ity of patent infringement and nullity actions, the production of technical evidence by an unbi - ased expert appointed by the judge is manda - tory, as the judge only has knowledge about legal issues. Such nomination usually happens after the plaintiff’s response to the defendant’s defence brief, once the judge has established the controversial points of the lawsuit that need to be analysed. The parties then appoint their own technical assistants who will be able to communicate with the court expert, and prepare queries to be answered by the expert during the technical evidence phase/final report. It is worth mentioning that parties can challenge the nomination of the court expert if there is lack of proof that the professional is a skilled per - son in the patent’s technology field or that the professional has industrial property knowledge. The specialisation of the court expert is there - fore a relevant aspect to be double-checked by the parties, since it directly impacts the quality of the technical report that will be issued, and also impacts on the quality and fairness of the trial, as most judges tend to follow the technical report’s conclusion, not having sufficient techni - cal knowledge to assess the technology involved themselves. However, it is important to mention that judges are not bound by an expert’s con - clusion and can adopt a different position from the technical report, as long as such decision is well grounded. 1.13 Use of Experiments In infringement actions, should a patent cover a method or a process, the burden of proof is on the defendant, according to the terms of Article 42, § 2o of the Brazilian Industrial Property Act. In this sense, it is the defendant (ie, the alleged infringer) who must prove that the method used by them is different from the one patented. Such
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