BRAZIL Trends and Developments Contributed by: Claudio Barbosa, Viviane de Medeiros Trojan, Jorge Tinoco and Daniel Leopoldino, Kasznar Leonardos Intellectual Property
The Latest in Patent Litigation in Brazil Foreword Brazil has emerged as a key jurisdiction in IP global strategy, not only due to its economical significance but also because of its robust pre- liminary injunction system. This underscores the pivotal role in IP protection that Brazil can play in resolving global disputes, particularly in the IT sector and other industries. Additionally, recent developments are enhancing Brazil’s position as a leading commercial gateway to South Ameri- ca, especially considering the anticipated Mer- cosur–European Union (EU) association agree- ment. Patent owners planning to operate or to license operations in Brazil should be mindful of the key opportunities within the country’s patent system. This chapter aims to support stakehold- ers in achieving these objectives. Preliminary remarks: the role of precedent in Brazil Unlike common law systems like the UK and US, Brazilian law, rooted in the Romanic–Germanic “Civil Law” tradition, attributes less weight to precedent. Judges have wide discretion to reach their own legal conclusions, with case law acting primarily as persuasive, not binding, authority. This rule is, however, not universal, as not all case law is made equal. Article 927 of the Brazil- ian Civil Procedure Code ( Código de Processo Civil – CPC) distinguishes binding precedents from merely persuasive ones. To this effect, while Brazilian court precedents are often informative and useful in supporting the construction of the judge’s rationale, prior rulings are seldom bind- ing. Brazilian Patent and Trade Mark Office (BRPTO): new rules on appeals In March 2024, the BRPTO issued Ordinance No 10/2024, which limits the Applicant’s movements
at the appellate level. Among the changes, the most relevant were the new rules for amend - ments to the set of claims at the appeal stage, which severely limited the strategic options available to the patent applicants. For context, here is a quick summary of the new restrictions. • Amendments to the set of claims at second instance must be a direct consequence of the objection raised by the first instance examin- ers. • Amendments to the set of claims must be a restriction of the set that was the object of the rejection, and it is forbidden to bring in matters that were abandoned during the first instance examination and/or that constitute an addition of scope. • Only restrictions that are expressly provided for in dependent claims, or that arise from the combination of independent/related claims, will be admitted. Restrictions arising from the patent description, and which are not expressed in the rejected claim set, will result in the proposed amended set being rejected. • Requests for a change of category will not be accepted in the second instance, unless the change has already been requested by the applicant in the first instance and has been unduly denied. These are changes that greatly alter the way the patent proceedings work in Brazil. Thus, since the Ordinance 10/2024 publication, pat- ent applicants have filed lawsuits against the BRPTO seeking to avoid any adverse effects of the new rules to their patent applications, with the commonly adopted strategy being to request for their claim set to be assessed based on the guidelines in force at the time their appeal was filed – ie, before 2 April 2024.
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