BRAZIL Law and Practice Contributed by: Gabriel F Leonardos, Claudio Barbosa and Viviane de Medeiros Trojan, Kasznar Leonardos Intellectual Property
9. Alternative Dispute Resolution 9.1 Type of Actions for Intellectual Property While courts remain the preferred venue for resolving patent cases involving significant legal or financial stakes, ADR methods such as arbi- tration and mediation are gaining popularity in various areas of law in Brazil, including patents. Many patent agreements and IP contracts now include ADR clauses, reflecting their growing acceptance. Although Brazilian law follows a civil law sys- tem, legal professionals have traditionally lacked a statutory basis for mediation, despite its clear foundation in contract law. This changed with the enactment of the Mediation Act (Law No 13,140) on 26 June 2015. However, mediation is still rarely used for patent disputes in practice. The Arbitration Act (Law No 9,307), enacted on 23 September 1996, has led to a significant increase in arbitration use over the past two dec- ades, demonstrating a growing shift toward ADR in Brazil. The Brazilian Code of Civil Procedure priori- tises the consensual resolution of disputes and encourages its use at various stages of judicial proceedings. For instance, Article 334 of the Code mandates the holding of a conciliation or mediation hearing before the start of conten- tious proceedings, unless both parties express a lack of interest. This hearing aims to promote an agreement before the merits of the case are adjudicated. Domain Name Disputes ADR is commonly used for domain name dis- putes, as Brazil has an administrative domain name resolution system (commonly known by its
acronym in Portuguese, SACI) that is based on ICANN’s Uniform Domain-Name Dispute-Res- olution Policy (UDRP) but incorporates several other causes for action, and a complaint under SACI may be based not only on trade mark rights (as is the case with the UDRP), but also on other intellectual property rights. 10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights According to Articles 58–60 of the LPI, a patent application or a patent may be assigned in whole or in part. Regarding patents, the BRPTO will make the fol- lowing records: • assignment, mentioning the complete qualifi- cation of the assignor and assignee; • any limitation or onus applied to the applica- tion or patent; and • changes of name, headquarters or address of the applicant or patentee. The recordings will produce effects towards third parties from the publication date in the official gazette. For assignment recordings, the following docu- ments are required by the BRPTO. • A transfer petition, completed with the data of the assignor and assignee. • Proof of payment of the governmental fee. • The assignment document, which should contain: (a) the complete qualification of the assignor and the assignee;
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