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What avenues of appeal are available from an adverse decision in a patent infringement lawsuit?
How and on what grounds can a patent be invalidated?
Does an inventor have an obligation to disclose prior art to the patent office examiner?
Is it possible to appeal an adverse decision by the patent office in a court of law?
How is the duration of patent protection determined?
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What types of legal or administrative proceedings are available for enforcing patent rights against an infringer, and are there specialized courts in which a patent infringement lawsuit can or must be brought?
Under Brazilian law, patent infringement is both a tort and a criminal offence. The patentee may simultaneously seek both criminal and civil remedies to stop the violation of patents. The following legal remedies are available:
Civil remedies:
- Search and seizure of the infringing products
- Ex part preliminary injunctions
- Recovery of damages
- Destruction of seized products
- Recovery of attorney fees and judicial costs
Criminal remedies:
- Ex part search and seizure of the infringing products
- Criminal complaint
- Imprisonment of the infringers
- Fines
The above remedies are available, in principle, only after a patent grant. However, there have been rare cases where an applicant has been successful in obtaining a cease-and-desist order during prosecution of an application.
Prior to a grant, an applicant can send a cease-and-desist letter to the alleged infringer using the Registry of Deeds and Documents or through the courts.
Patent infringement lawsuits are brought before the state courts where the alleged infringement took place or where the defendant is domiciled or established. It should be noted that there are eight specialized courts for handling infringement lawsuits in Rio de Janeiro. The other Brazilian states have not yet adopted such a measure.
What is the format of a patent infringement trial, to what extent are documents, affidavits, and/or live testimony relied on, is cross-examination of witnesses permitted, are experts (court-appointed or private) used, are disputed issues decided by a judge or a jury, and how long does a trial typically last?
A patent infringement trial in the civil courts has the format of a regular civil action. Live testimony, documents, affidavits and any other material can be used in the trial to convince the judge. Cross-examination of witnesses is permitted. The court normally nominates experts who file written opinions in reply to written questions by the parties - who can also nominate technical assistants to interact with the experts.
The trial at the first jurisdiction level might last from two to four years. However, the availability of preliminary injunctive relief should be strongly considered for patent infringement cases.
What are the respective burdens of proof for establishing infringement, invalidity, and unenforceability of a patent?
The burden of proof lies with the plaintiff or petitioner except in the case of process claims or product-by-process claims (where the product is directly obtained from the process) when the burden is reversed.
Who is entitled to sue for patent infringement (patent owner, exclusive licensee, non-exclusive licensee, distributor), and under what conditions, if any, can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?
Both criminal and civil actions may be initiated by the patentee or by anyone who is properly vested with powers for lodging the action. Since, however, it is debatable whether licensees are entitled to initiate actions for offences against IP rights, it is advisable that all licenses, when so desired, specifically empower the licensee to file infringement actions.
The defendant can assert the nullity of the patent in the state courts as a defense (in which case any decision favorable to the defendant will not result in the patent actually being declared null) or a separate nullity action before the federal courts may be filed.
To what extent can someone be liable for inducing or contributing to patent infringement by someone else?
The Brazilian Patent Law defines the act of supplying a component of a patented product, or material or equipment for carrying out a patented process, provided that the final application of the component, material or equipment necessarily leads to the exploitation of the subject matter of the patent, as a crime.
To what extent, if any, can activities which take place outside the country support a charge of patent infringement?
Importation of a product obtained by manufacture abroad, directly through a process patented in Brazil, constitutes patent infringement when such manufacture is without the consent of the patentee.
Parallel importation does not constitute a crime of infringement but, although the law is not absolutely clear in this respect, is considered as a tort.
To what extent, if any, are 'equivalents' of the claimed subject matter (not literally covered by the claims) liable for infringement?
A crime is committed even if the violation is restricted to the use of means equivalent to the subject matter of the patent. However, since the Law came into force in 1997, we are unaware of any case addressing the question of equivalents.
What mechanisms are available for obtaining evidence from an adverse party, from third parties, and/or from outside the country for proving infringement, damages, or invalidity?
A preliminary search and seizure measure to obtain evidence may be requested in both the civil and criminal sphere, to inspect the premises of the alleged infringer or where it is suspected that the infringement is taking place. Such measures include the preparation of technical reports from experts appointed by the courts.
What is the typical timetable for a patent infringement lawsuit in the trial court and in the appellate court?
The timetable of events for a patent infringement lawsuit is very variable. In this regard, we can estimate a total average time from three to six years until a final decision is issued. However, there are cases where a preliminary cease-and-desist injunction may be obtained, pending a final decision, within days of filing the action.
What avenues of appeal are available from an adverse decision in a patent infringement lawsuit?
Each state has its own court of appeal. Any decision appealed from a lower court will be referred to the local court of appeals, the decision of which is final unless there are constitutional questions that can be referred to the Supreme Court of Justice in Brasilia.
In addition, during the trial there may be interlocutory decisions that, in themselves, may be appealed (by agravo) to the local higher court.
To what extent can enforcement of a patent expose the patent owner to liability for an antitrust violation, unfair competition, or a business-related tort?
In principle, the enforcement of a patent will not in itself provoke liability for unfair competition, antitrust violation or business related tort, unless there is bad faith on the part of the owner of the patent.
To what extent are alternative dispute resolution techniques (eg mediation, arbitration) available to resolve patent disputes?
The use of alternative mechanisms, such as arbitration and mediation, to resolve disputes are fully in line with the Federal Constitution. Although Brazil promulgated a local arbitration law in 1996 and ratified the New York Convention in 2002, ADR techniques have so far rarely been used.
Can a patent be obtained to cover any type of invention, including software, business methods, and/or medical procedures?
No. A patent cannot be obtained for all types of invention.
Computer programs per se and business methods are not patentable. However, software inventions are patentable provided that they comply with the patentability requirements established in the law, ie novelty, inventive activity and industrial applicability, this including the European concept of technical character. Although business methods are not patentable, some protection may be obtained when systems are used that meet the above patentability requirements.
Operating or surgical techniques and therapeutic or diagnostic methods are not patentable if they are for use on the human or animal body.
Who owns the patent on an invention made by (i) a company employee, (ii) an independent contractor, or (iii) multiple inventors, and how is patent ownership officially recorded and transferred?
An invention belongs exclusively to the employer if the employee was hired to invent and to work on research activities, or if the research is a result of the nature of the services carried out by him. However, if the invention is totally independent of the duties related to his employment, the employee will be entitled to be the single owner of the invention. In certain circumstances, however, ownership may be shared.
Should an independent contractor be contracted to develop a specific invention and was properly remunerated for this service, the invention will exclusively belong to the contracting party.
As to multiple inventors, the invention will belong to each one of them insofar as they are considered as co-inventors.
How and on what grounds can a patent be invalidated?
An administrative nullity procedure may be instituted when:
- any of the legal requisites have not been met;
- the specification does not describe the subject matter clearly and sufficiently enough to enable a person skilled in the art to carry it out and, furthermore, does not indicate, when applicable, the best mode of execution;
- the claims are not based on the specification and do not characterise the particularities of the application and define clearly and precisely the subject matter to be protected;
- the subject of protection of the patent extends beyond the contents of the application as originally filed; or
- any of the essential formalities indispensable for the granting were omitted during prosecution.
The nullity procedure may be instituted ex officio or at the request of any person having legitimate interest, within six months of the grant of the patent.
A nullity action can be filed before the courts at any time after a grant by the Brazilian PTO or by any legitimately interested party.
Is there an 'absolute novelty' requirement for patentability and, if so, are there any exceptions to the requirement?
Brazil adopts, as a general rule, the absolute novelty principle, which means that the invention is new if it is not included in the state of the art, which comprises everything made accessible to the public before the date of filing of a patent application, by written or oral description, by use or any other means, in Brazil or abroad. The whole contents of an application filed in Brazil but not yet published, will be considered as state of the art (only as regards novelty) from the date of filing, or from the priority claimed, provided that it is published subsequently.
However, there is a grace period if the disclosure of an invention or utility model occurs during the 12 months preceding the date of filing or priority of the patent application and it is made by the inventor, by the Brazilian PTO, or by third parties, on the basis of information received directly or indirectly from the inventor or as a result of his acts. This includes sale.
What is the legal standard for determining whether a patent is 'obvious' or 'inventive' in view of the prior art?
An invention shall be taken to involve inventive activity when, for a person skilled in the art, it does not derive in an evident or obvious manner from the state of the art.
A utility model shall be taken to involve an inventive act when, for a person skilled in the art, it does not derive, in a common or usual manner, from the state of the art.
The differences between an invention and a utility model are very subjective and difficult to establish. However, it is advisable to bear in mind that utility model patents are directed to protect a product with a low level of inventive activity, which is called an inventive act.
Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?
In principle, the answer is no since its nullity has necessarily to be declared first. However, a compulsory licence could be provided if, at any time after grant, the owner uses the exclusive patent rights in an abusive manner or by means of it, practices abuse of economic power that is proven under the terms of the law by an administrative or court decision.
How long does it typically take, and how much does it typically cost, to obtain (and maintain) a patent?
In view of the enormous backlog of patent applications in the Brazilian PTO, the average time for granting patents varies from five to seven years counting from the filing date.
As to total costs, considering a hypothetical patent granted after seven years from filing, which underwent a single office action during its prosecution and has 20 pages, the costs will be around US$12,000 (all costs included), this including all official fees with annuities up to the twentieth year.
Does an inventor have an obligation to disclose prior art to the patent office examiner?
There is no 'duty of disclosure' provision in the Brazilian regulations. Copies of corresponding patents, office actions and similar are provided only if requested by the examiner by means of a formal office action.
Is it possible to appeal an adverse decision by the patent office in a court of law?
Yes, it is possible to go before the federal courts to reverse an administrative decision. However, it should be noted that, in most instances, prior to lodging a court action (during the administrative phase), the applicant has a chance to file a low-cost administrative appeal to the president of the BPO.
Does the patent office provide any mechanism for opposing or protesting against the grant of a patent?
Prior to the end of examination, third parties may submit documents and information for consideration by the examiner.
After and within six months of the grant, third parties may request administrative nullity. This is also a relatively low-cost procedure before the president of the BPO.
Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention, and what factors determine who has priority?
There is no interference procedures in Brazil. Considering that Brazil uses the first-to-file system, the first applicant, who filed the application, is presumed to be the rightful author. However, for a third party who considers that a misappropriation took place, there is the opportunity of filing an adjudication court action in order to show that they are the actual owner of the patent or patent application.
Does the patent office provide procedures for modifying, re-examining, and/or revoking a patent after it has been granted, and can a court amend the patent claims during a lawsuit?
There is not a specific re-examination procedure for the patent but it is possible to have some claims of the patent cancelled in view of the results of a nullity action before the court or due to the decision of the Brazilian PTO on an administrative nullity procedure. Decisions in administrative nullity procedures have resulted in patents being maintained with amended claims.
How is the duration of patent protection determined?
A patent of invention has term of 20 years and a utility model patent a term of 15 years counting from the filing date. However, as a protection against excessive prosecution delays, patents of invention are guaranteed 10 years from grant and utility model patents are guaranteed seven years from grant.
