BRAZIL Law and Practice Contributed by: Gabriel F Leonardos, Claudio Barbosa and Viviane de Medeiros Trojan, Kasznar Leonardos Intellectual Property
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement Patent infringement in Brazil can be tackled by means of a civil and/or a criminal action. As in Germany and many other countries, Brazil adopts a bifurcated system so that nullity and infringement are generally ruled on by different jurisdictions. Patent infringement actions, civil or criminal, are within the statutory authority of state courts. Recently, a decision by the Superior Court of Justice expanded the authority of state courts to allow them to hear nullity claims when they are brought by a defendant in response to infringement claims. In such circumstances, the effects of a finding of patent nullity will be limited to the parties-in-suit. In general, these lawsuits must be filed before the court of the place where the defendant has their main business or where the infringement happened, provided that other civil procedure rules are observed. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property The main remedies available for third parties to remove the effects of intellectual property rights are pre-grant and post-grant review proceed- ings, nullity lawsuits and compulsory licences. In addition, the nullity of a patent can also be argued as a means of defence in the dockets of an infringement lawsuit (paragraph 1, Article 56, LPI). Pre-Grant and Post-Grant Review Interested parties may initiate administrative proceedings before moving to the courts. Such proceedings may take the form of either motions for pre-grant or post-grant review. Post-grant
proceedings were already explained previously (see 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights ), pre- grant reviews are explained here. In a nutshell, Article 31 of the LPI allows an interested third party to provide the BRPTO with “subsidies” at any time during the examination of an application. An interesting point of note: The current interpretation of who could be an “interested third party” is very broad, encom- passing any member of society. Usually, such subsidies take the form of prior art that the examiner may have missed. The inter- vening third party may also provide any argu- ments they deem important to steer the exami- nation. Nullity Lawsuit The annulment of a patent can also be sought before the Federal Trial Courts (under the same grounds as a post-grant review – see 1.10 Post- Grant Proceedings Available to Owners of Intellectual Property Rights ) and the BRPTO’s participation is mandatory (Articles 56 and 57, LPI). The judicial nullity action can be filed at any time during the term of a patent by the BRPTO or any legitimately interested party. After the filing of the lawsuit, the BRPTO is sum- moned to answer the initial complaint and can either maintain its opinion on the validity of the patent claims or review its opinion by agreeing with the nullity. Nullity argument in infringement lawsuit dockets Paragraph 1, Article 56 of the LPI states that the nullity of a patent can be argued at any time as a matter of defence in an infringement lawsuit. The eventual removal of the effects of
57
CHAMBERS.COM
Powered by FlippingBook