BRAZIL Law and Practice Contributed by: Gabriel F Leonardos, Claudio Barbosa and Viviane de Medeiros Trojan, Kasznar Leonardos Intellectual Property
2.12 Representative or Collective Action The Brazilian legal system permits class actions for patent proceedings in certain situations. If damage is caused to the public as a whole or to the honour or dignity of a racial, ethnic or religious group, a civil action may be filed by public prosecutors or by any public group that is affected (Law No 7,347/85). The decision in this civil action will bind everyone, unless the decision is to dismiss the action on grounds of lack of proof, in which case anyone can file an individual complaint. In the last 20 years, there have been several important civil actions filed by ABPI (the Brazilian Association of Intellectual Property) and ABAPI (the Brazilian Association of Intellectual Property Attorneys) regarding the interpretation of several aspects of IP Law and also challenging acts of the BRPTO. 2.13 Restrictions on Assertion of an Intellectual Property Right Article 45 of the LPI establishes the “prior user exemption” – ie, that a person who, in good faith, benefited from the patented technology within Brazil, prior to the filing or priority date of a patent application, shall be entitled to continue receiving such benefits under the same form and conditions, without incurring liability. Thus, the owner of the patent cannot prohibit the use of the patent by a third party acting in good faith. In addition, Article 43 of the LPI establishes certain acts, and circumstances that the patent owner cannot oppose. • Acts carried out privately and with no com- mercial purpose by unauthorised third par- ties, provided that these acts do not harm the legitimate economic interests of the patent owner.
• Acts carried out by unauthorised third parties for experimental purposes, if related to stud- ies or scientific or technological research. • The preparation of a medicine in accord- ance with a medical prescription in individual cases, and carried out by a qualified profes- sional, or the medicine thus prepared. • A product manufactured in accordance with a process or product patent that has been placed on the internal market directly by the patent holder or with his or her consent (ie, national exhaustion). • Other persons who, in the case of patents related to living matter, use the patented product, without economic purpose, as an initial source of variation or propagation to obtain other products. • Other persons who, in case of patents related to living matter, use, place in circulation, or market a patented product that has been lawfully placed on the market by the owner of the patent or their licensee, provided that the patented product is not used for commer- cial multiplication or propagation of the living matter concerned. • Acts carried out by unauthorised third par- ties aimed exclusively at producing informa- tion, data, and test results looking to attain regulatory approval (in Brazil or abroad) for commercialisation of a patented product after the expiration of the patent term (ie, the Bolar exemption). 3. Infringement 3.1 Necessary Parties to an Action for Infringement The plaintiff can be the owner of the intellectual property, or the licensee, when the patent licence agreement expressly foresees it and if the agree-
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