BRAZIL Trends and Developments Contributed by: Claudio Barbosa, Viviane de Medeiros Trojan, Jorge Tinoco and Daniel Leopoldino, Kasznar Leonardos Intellectual Property
hearing aims to provide the judge with enough information to rule on the “likelihood” of plain- tiffs’ claims without the need to conduct thor- ough examination. In summary, a court expert is appointed, and the parties are summoned to pay his/her fees (normally the expert fees are low at this stage). After paying the expert’s fees, the court sets a date for the hearing. During the hearing, the court expert makes a brief explanation of his/ her understanding of the claimed invention and the accused product, the judge and the parties may ask a few questions (three to five each) to the court expert, after which the judge makes their closing remarks. In recent SEP cases, the preliminary hearing seemed to be particularly helpful in allowing the judge to make her decision, as interim relief was initially granted (when the plaintiff made their statement of claim), then suspended (when the defendant made their statement of defence) and finally reinstated after the preliminary hearing helped the judge to attain a better grasp on the technology and the claimed invention. While judges’ attitudes towards these hearings are still far from unanimous, their recurrence makes this a trend to watch. Considering the impactful effects that preliminary injunctions may have in commercial operations, such pre- liminary hearings may provide judges with more information to provide a quick, decisive and – overall – informed decision on whether interim relief is warranted in a particular situation. New developments in case law for indirect infringement Brazilian statute assures to the inventor the right to enjoin third parties from engaging in indi- rect infringement (ie, conducting contributory
infringement and/or actively inducing infringe- ment). Nevertheless, indirect patent infringement is still an underdeveloped subject within the Brazilian legal system. While national legal scholars have discussed the topic, there is no solid case law or legislative guidance to establish a test for con- tributory infringement. Hence, plaintiffs arguing for contributory infringement often borrow the provisions contained in the United States Code (35 USC, Section 271(b) and (c)) to demonstrate the occurrence of infringement. Recently, two cases tried by the São Paulo State Court of Appeals tackled issues of indirect infringement. The first matter relates to a very peculiar claim for indirect infringement. The plaintiff/appellant filed suit against the defendant/appellee alleg- ing that the defendant’s conduct of commer- cialising medicines with the active ingredient contributed to the infringement of the plaintiff’s patents. Although the active ingredient itself is not covered by the plaintiff’s Brazilian patents, after ingestion, it induces the body to metab- olise a substance which is covered by one of the plaintiff’s patents – a fact undisputed by the defendant. In an unusual decision, the trial judge rendered summary judgment (without pro- ducing expert evidence) to reject the plaintiff’s arguments on two main grounds: (i) the alleged breadth of the patent is inconsistent with the “industrial application” requirement; and (ii) allowing such a wide power to the patent owner would contradict the social goals of the patent system. The plaintiff requested summary judg- ment due to the fact that the defendant did not dispute that – once metabolised – the human body will produce the patented substance. On appeal, the reporting appellate judge stated that the summary judgment issued by the trial
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