Brazil has adopted civil law system and its legal framework is composed of numerous ordinary laws, which are all subject to the provisions of the Federal Constitution of 1988 (Constitution). The protection and enforcement of patents are governed by the Industrial Property Law (Law 9279/96) (IP Law), which is a federal law enacted in 1996 in accordance with the applicable international treaties.
Brazil is a party to several international treaties, namely the:
· WIPO Paris Convention for the Protection of Industrial Property 1883 (Paris Convention).
· Patent Cooperation Treaty 1970.
· WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS).
The Constitution is the main legal source and takes priority over all other sources of law. Federal laws rank below the Constitution (including the IP Law). The Brazilian legal system also recognises case law, analogy, common customs and general principles of law as tools to resolve disputes.
To be effective in Brazil, international treaties must be ratified by a legislative decree, which once approved is classified as a federal law. The Brazilian Supreme Court has held that, in the case of a conflict between a federal law and an international treaty, the principle of lex posterior derogat lex priori must be applied, which means that the newer rule will revoke the older rule.
Civil patent proceedings must comply with the Brazilian Civil Procedure Code (Law 13.105/15). The Civil Procedure Code came into force in March 2016 and brought several modifications to expedite proceedings. Criminal patent proceedings must follow the rules of the Criminal Procedure Code (Law Decree 3.689/41).
The normative rulings of the Brazilian Industrial Property Office (Instituto Nacional da Propriedade Industrial) (INPI), which is the governmental body in charge of granting patents in Brazil, are relevant to patent litigation.
Brazil also recognises arbitration proceedings, which are governed by the Brazilian Arbitration Law (Law 9307/96) and by the Civil Procedure Code. Brazil is also a signatory of the UN Convention on the Execution and Enforcement of Foreign Arbitral Awards 1958, subject to the recognition of foreign awards by the Superior Court of Justice. As patent infringement cases usually arise from non-contractual relationships, arbitration proceedings are limited.
Although the amount of patent litigation in Brazil is far from the level of litigation in the US, patent infringement actions are very common in the jurisdiction. Such actions are the most effective measure against infringers, since preliminary injunctions are widely available. This makes Brazil very attractive as an additional battlefield for worldwide patent disputes.
Brazil has a truly independent judiciary system, and judges are doing their best to enforce the rule of law. In contrast to other BRICS countries, there is no bias against foreign companies. A great number of infringement actions initiated against local companies are filed by foreign entities, and their chances of success are basically the same as those of any other plaintiff.
In comparison with the US, the standards for obtaining injunctive relief in Brazil are much lower than one might expect as, for instance, there is no need to give notice to the defendant, and the parties are allowed to have ex parte in chambers meetings with the judges, meaning that plaintiffs are often able to obtain preliminary injunctive relief even before the defendants are served with the summons. In certain places, for example, Rio de Janeiro, plaintiffs are able to obtain injunctions more often than not.
Moreover, obtaining preliminary injunctive relief is possible even if the asserted patents cover standard-essential technologies, as in Vringo v ZTE and Ericsson v TCT. In both cases, the defendants were prevented from manufacturing, using, selling, offering and importing the infringing goods in Brazil. A preliminary injunction may also include search and seizure measures or orders for the defendant to present copies of contracts and other relevant documents, as well as notifications to third parties and to customs authorities to make relevant information about their dealings with the defendant available.
Generally, to obtain injunctive relief, the plaintiff must present sufficient documentary evidence to establish (i) the likelihood of eventually prevailing on the merits and (ii) that the result sought with the lawsuit could be frustrated or harmed if an injunction is not granted (i.e. the plaintiff must establish that granting the preliminary injunction is an urgent matter). Alternative ways of obtaining preliminary injunctions occur when the plaintiff is able to establish that the defendant is presenting defences and objections in an abusive way, or that the defendant is trying to delay the proceedings, or if the defendant is not able to create reasonable doubt regarding the facts alleged by the plaintiff.
Additionally, in order to maximise the chances of obtaining an injunction, it is usual for plaintiffs to present several technical opinions from wellknown local and foreign experts, normally professors teaching at renowned universities, in support of their arguments.
In a nutshell, the lower standards for obtaining preliminary injunctive relief make Brazil a very favourable battleground to enforce patent rights in global litigation. This is an opportunity for non-practising entities (NPEs) and a substantial risk for corporations facing infringement claims.
A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.
The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain; that is, anyone can commercially exploit the invention without infringing the patent.
A patent owner has the right to decide who may – or may not – use the patented invention for the period in which the invention is protected. In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported, or sold by others without the patent owner's consent.
Patents may be granted for inventions in any field of technology, from an everyday kitchen utensil to a nanotechnology chip. An invention can be a product – such as a chemical compound, or a process, for example – or a process for producing a specific chemical compound. Many products in fact contain a number of inventions. For example, a laptop computer can involve hundreds of inventions, working together.
Patent protection is granted for a limited period, generally 20 years from the filing date of the application.
Patents are territorial rights. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.
Patent rights are usually enforced in a court on the initiative of the right owner. In most systems a court of law has the authority to stop patent infringement. However the main responsibility for monitoring, identifying, and taking action against infringers of a patent lies with the patent owner.
Licensing a patent simply means that the patent owner grants permission to another individual/organization to make, use, sell etc. his/her patented invention. This takes place according to agreed terms and conditions (for example, defining the amount and type of payment to be made by the licensee to the licensor), for a defined purpose, in a defined territory, and for an agreed period of time.
A patent owner may grant a license to a third party for many reasons. The patent owner may not have the necessary manufacturing facilities, for example, and therefore opts to allow others to make and sell his/her patented invention in return for “royalty” payments. Alternatively, a patent owner may have manufacturing facilities, but they may not be large enough to cover market demand. In this case, he/she may be interested in licensing the patent to another manufacturer in order to benefit from another income stream. Another possible situation is one in which the patent owner wishes to concentrate on one geographic market; therefore the patent owner may choose to grant a license to another individual/organization, with interests in other geographical markets. Entering into a licensing agreement can help to build a mutually-beneficial business relationship.