BRAZIL Trends and Developments Contributed by: Claudio Barbosa, Viviane de Medeiros Trojan, Jorge Tinoco and Daniel Leopoldino, Kasznar Leonardos Intellectual Property
One of the first trial judgments was issued in August 2024. Although the trial court agreed on the impossibility of applying the new rules retro- actively, the decision stated that future amend- ments to the claim set would be conditioned to Ordinance 10/2024. The plaintiff appealed. As of now, it remains to be seen what the Appeal Court’s position will be. By the end of 2025 we will certainly see the case law of the Appeal Courts heading in one of these directions. But one notable aspect that none of these cases sought to discuss is the legality of the rules introduced by Ordinance 10/2024. It is important to highlight that despite informing BRPTO’s interpretation and modus operandi, such guidelines are not themselves legally bind- ing, and similar scenarios can also be addressed by this perspective – something we will probably see in 2025, as the legal strategy in the above cases becomes unfeasible for more recent pat- ent applications. Invalidity defence before state courts: a new pathway for seeking patent invalidation Patent practitioners understand that a claim for infringement is often accompanied by a counter- claim for patent nullity. In Brazil, while infringe- ment plaintiffs must seek their claims before state courts, nullity plaintiffs must file suit before a federal court and appoint the BRPTO as a co- defendant. Nevertheless, the Brazilian Patent Statute also allows for patent nullity to be argued at any time as a means of defence. This caveat led to a controversy: can state courts decide about the nullity of a patent in the context of an ongoing infringement proceeding (ie, an “inci- dental” nullity claim)? In Bravo & Bravo v Antônio Freitas, the Superior Court of Justice ( Superior Tribunal de Justiça – STJ), Brazil’s highest court with jurisdiction over
non-constitutional matters, resolved this issue. The plaintiff (Antônio Freitas) initiated infringe- ment proceedings against the defendant’s (Bravo & Bravo) use of an industrial design (ie, a design patent) held by the plaintiff. The trial court entered judgment for the plaintiff and the Court of Appeals affirmed the lower court’s deci- sion. The matter was further appealed to the STJ on the grounds that none of the state courts’ judgments (both at the trial and appellate levels) had considered the defendant’s incidental nul- lity claim. In June 2024, the members of the panel unani- mously affirmed the possibility of a defendant in an infringement case incidentally asserting inter partes patent nullity claims before state courts within their statement of defence, thus resolving the issue, and providing a clear rule for lower courts to follow. Patent-Term Adjustment (PTA) in Brazil: where we are and where we want to be Currently, there are 65 publicly available law- suits in Brazil requesting for a PTA based on the BRPTO’s examination delays – ten more than in the corresponding period last year. This is the result of a trend that started in 2021, when the Federal Supreme Court ( Supremo Tribunal Fed - eral – STF) declared unconstitutional the provi- sion allowing patents to remain in force for, at minimum, ten years from their granting, lead- ing innovators to seek a case-by-case solution through the judiciary. As became clear by the end of 2023, despite a successful start, the PTA strategy had lost steam. Although PTA lawsuits continue to be filed and the overall number of lawsuits keeps increasing, patentees are not finding a favour- able result before the federal courts in Brazil. Furthermore, a decision from 2024’s first quarter
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