BRAZIL Law and Practice Contributed by: Gabriel F Leonardos, Claudio Barbosa and Viviane de Medeiros Trojan, Kasznar Leonardos Intellectual Property
ment is recorded by the BRPTO. In such cases, the defendant is the alleged infringer. 3.2 Direct and Indirect Infringement Direct infringement occurs when all the elements of a patent claim granted by the BRPTO are vio- lated, and an indirect infringement occurs when, although not all the elements of the claims of the patent are literally infringed, the offender uses equivalent means to the subject matter of the patent. Although Article 186 of the LPI sets forth that a crime against a patent of invention is committed even if the violation does not affect all the claims of the patent or if it is restricted to the use of “means equivalent” to the subject matter of the patent, the statute does not define what such means would be. In this sense, the parties shall rely on case law and the work of legal scholars to prove the (non)violation by equivalence. 3.3 Process Patents Under Article 42 of the LPI, a patent grants its owner the right to prevent unauthorised manu- facturing, use, sale, offering for sale, or importa- tion of a patented process or product, or contri- bution to such acts. Process patent infringement occurs when a third party uses a patented pro- cess without the owner’s consent. In such cas- es, the burden of proof may be shifted to the accused party, requiring them to demonstrate that their process differs from the patented one (Article 42, LPI; and Article 373, Brazilian Civil Procedure Code). 3.4 Scope of Protection for an Intellectual Property Right The scope of protection of a patent is determined by the claims as granted by the BRPTO, and it is interpreted in accordance with state-of-the-art
development at the date of filing, and with the history of the prosecution of the application. 3.5 Defences Against Infringement Apart from the non-infringement of the patent, other usual defences against patent infringe- ment include: • prior use; • experimental use; • nullity of the patent; and • abuse of dominant position/failure in the obligation to offer fair, reasonable and non- discriminatory (FRAND) licensing opportuni- ties related to SEPs and patent exhaustion. 3.6 Role of Experts As prescribed by Article 156 of the Civil Proce- dure Code, judges shall be assisted by experts whenever the facts depend on technical or sci- entific knowledge. Experts can be appointed by the court or be appointed consensually by the parties. It is also possible that more than one unbiased expert is appointed, especially when the patent in ques- tion involves multiple fields of knowledge. The court expert will be required to provide the judge with a full report with their opinion on any questions raised by the parties (and allowed by the judge), as well as on questions possibly raised by the judge. After the judge nominates the court expert, the parties shall indicate their own technical assistants, who will co-operate with the court expert. Although judges are not obliged to follow an expert’s opinions when ruling on cases, courts tend to rely on technical opinions, which play an important role in patent infringement actions.
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