BRAZIL Law and Practice Contributed by: Gabriel F Leonardos, Claudio Barbosa and Viviane de Medeiros Trojan, Kasznar Leonardos Intellectual Property
the patent rights ordered by a state judge in an infringement lawsuit are restricted to the parties involved in the infringement proceeding (inter partes effects). Recently, the Superior Court of Justice issued a ruling explicitly allowing defend- ants in infringement suits to raise nullity claims as a means of defence. Hence, there is a found- ed expectation that this mechanism will be used more often by defendants seeking to strike down Articles 19 and 20 of the Brazilian Civil Proce- dure Code allow parties to seek purely declara- tory judgments regarding the existence (or non-existence) of legal relations. Hence, inter- ested parties may seek the judiciary to attain a declaratory judgment of non-infringement if they have a legitimate concern that a patent owner will pursue infringement claims against them. Usually, when a party files lawsuit seeking a declaratory judgment of non-infringement, the common response is for the patentee to assert their infringement claims. Compulsory Licences Compulsory licence is a mechanism which allows the use of patent rights without the con- sent of their owner. It is governed by Articles 68–74 of the LPI. patents asserted against them. Declaration of Non-Infringement A patentee will be subject to having their pat- ent licensed compulsorily if they exercise the rights resulting therefrom in an abusive manner or by means of abuse of economic power that is proven under the terms of the law by an adminis- trative or court decision. The following situations may also result in a compulsory licence: • non-exploitation of the subject matter of the patent in Brazil, unless local manufacture of
the product is proven to not be economically feasible; • commercialisation that does not meet the market’s demand; • when the use of a patent depends on licens- ing another patent, the subject matter of the dependent patent characterises substantial progress from the prior art and no agreement is reached between patent holder and licen- see; and • national emergency and protection of public interest. Conversely, no compulsory licence shall be granted when the patent owner is able to dem- onstrate that: • the lack of use of the invention in Brazil occurred for legitimate reasons; • there have been serious and effective efforts to prepare for use; or • the lack of manufacture or commercialisation Brazil adopts a bifurcated patent litigation sys- tem. Patent infringement lawsuits fall within state jurisdiction, while nullity actions must be heard by federal courts (due to the mandatory pres- ence of the BRPTO). Both the state and federal courts have trial and appellate levels. There are 27 state courts in Brazil (one for each of the 26 states and another for the Federal District) and the State Courts of São Paulo and Rio de Janeiro are responsible for most of the complex infringement and contractual litigations involving patents. The Federal Court of Appeals for the 2nd Circuit, located in Rio de Janeiro, is the most relevant of the five federal courts in terms of patent litigations involving the BRPTO. occurred due to a legal obstacle. 2.3 Courts With Jurisdiction Bifurcated System
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