BRAZIL Law and Practice Contributed by: Gabriel F Leonardos, Claudio Barbosa and Viviane de Medeiros Trojan, Kasznar Leonardos Intellectual Property
4.4 Revocation/Cancellation and Infringement
• revenue lost by the plaintiff due to the infringement; • revenue gained by the defendant from the infringement; or • the amount of a hypothetical licence agree- ment for regular use of the infringed patent. The plaintiff must choose by the start of the liq- uidation phase, which typically begins about two years after the final decision on the merits. This phase usually requires an accounting expert to assist the judge in calculating the damages. 5.2 Decision-Makers Patent cases are heard by trial state judges or trial federal judges before the courts of first instance. Each trial court usually has one presid- ing judge and one auxiliary judge, and both have powers to rule over a patent case depending on the local court rules. As judges typically lack technical or IP exper- tise, court-appointed experts provide impartial technical reports for the trial judge’s evaluation. These decisions can be challenged in state or federal appellate courts and the superior courts, including the Supreme Court. At the Court of Appeals, the panels are com- prised by at least three appellate judges who render a single opinion. The parties shall have no influence on trial judges, state and federal courts or the superior courts. The Brazilian Civil Procedure Code pro- vides that if the party has any personal connec- tion with the judge, the judge must be replaced. Regarding the nomination of judges in Brazil, it is important to note that judges at the trial level are individuals who have been approved in a public examination and can develop in their career to
Revocation or cancellation and infringement cases are not heard together due to the bifurcat- ed nature of the Brazilian system (see 2.3 Courts With Jurisdiction ). While the Superior Court of Justice now allows patent nullity to be argued within a single lawsuit, a nullity judgment in this context would only produce inter partes effects, binding only the parties involved. 5. Trial and Settlement 5.1 Special Procedural Provisions for Intellectual Property Rights The LPI includes specific procedural provisions for patent lawsuits. Under Article 56, paragraph 2, a judge may grant an injunction suspending a patent’s effects if procedural requirements are met. This request can be made at any time dur- ing litigation and is typically decided quickly due to its urgency. Fact witnesses are rarely required, but expert reports are commonly submitted. The trial judge issues the injunction decision, which can be appealed through an interlocutory appeal to the Court of Appeals. Article 57 states that annulment lawsuits must be heard by Brazilian federal courts, with the BRP- TO and the patent owner as mandatory defend- ants. The BRPTO can agree with the plaintiff’s claims and request the patent’s invalidation. Paragraph 1 grants the patent owner a 60-day period (instead of the usual 15 days) to submit a reply to an annulment lawsuit Article 210 states that damages will be deter- mined in the liquidation phase, based on the plaintiff’s choice of the most beneficial criterion:
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