International Comparative Legal Guide: Patents 2017

1 PATENT ENFORCEMENT

1.1 Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and what would influence a claimant's choice?

As a rule of thumb, enforcement is a matter of state jurisdiction. Each Brazilian state has a state court system and, therefore, infringement lawsuits can be filed before any state court, provided that other rules of civil procedure are observed. As a general rule, infringement lawsuits must be filed in the state where the accused infringer has its principal place of business or in any place where acts of infringement occurred.

1.2 What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement?

An infringement lawsuit starts with the filing of an initial brief, where plaintiffs must assert their claims of infringement alleging that the accused product infringes a patent. Normally, the burden of the proof falls on the plaintiff (except in the case of infringement of a process patent), who often presents documentary evidence upfront, including technical and legal options. After the defendant is duly served of the complaint, he normally has 15 days to file an answer, where all possible defences, including counterclaims of invalidity, shall be presented together with the supporting evidence. In an infringement case, both parties may request the court to allow the submission of further evidence during the proceeding; most importantly, the production of technical evidence by an expert to be appointed by the court at a later stage. The plaintiff then has a 10-day term to file a reply brief, before the judge decides on the requests made by each party regarding production of evidence. At this stage, the court may also identify issues that are not under dispute and decide any preliminary argument raised by the parties. If the production of technical evidence is required, the judge will then appoint a court expert to prepare a technical report that will be used to assist the court. Parties may elect their own experts to interface with the court-appointed expert and provide any clarification which he may need. Parties may also submit technical questions to be answered by the court expert relating to infringement and validity. After the court-appointed expert files his report with the court, and parties submit their own arguments in relation to such report, the judge will then set a date for closing arguments (written) and a date for trial. If no oral evidence is needed, the court may also render a final judgment without a trial. The pre-trial stage may take an average time limit of eight months. In cases where any party contests the court-appointed expert's nomination, and depending on the complexity of the case, this schedule may be substantially delayed.

Costs are generally borne by the losing party, in accordance with Article 20 of the Brazilian Civil Procedure Code. The court may award loss of suit costs covering court fees and the expenses incurred by the prevailing party, as well as the fees of expert witnesses and other related costs of the proceedings. The award may also include an amount covering loss of suit attorney fees, stipulated by the court. Loss of suit attorney fees is normally fixed at 10-20% of the overall award of damages (if any) as per Article 20, item 3 of the Civil Procedure Code. Note that the award of loss of suit attorney fees by the court is independent of the fee agreement reached between the parties and their attorneys; in other words, the prevailing party may still need to pay attorney fees even when the court makes an order for loss of suit fees in favour of his attorney.

1.3 Can a party be compelled to disclose relevant documents or materials to its adversary either before or after commencing proceedings, and if so, how?

Under Brazilian procedural law, there is no general obligation for a party to list or disclose documents, but the parties will usually submit documents which they consider relevant to support their own case. Documents are filed at court, but not served on the other side.

The plaintiff is required to attach to the brief or complaint the documents which support his case, and to allow for further evidence which he intends to adduce in the proceedings. The defendant then does the same when filing the defence, challenging the plaintiff's arguments and evidence.

1.4 What are the steps each party must take pre-trial? Is any technical evidence produced, and if so, how?

Each side submits its written arguments and documentary evidence. Parties may submit almost any kind of evidence before trial, from prior art references to technical and legal opinions. Technical experts are frequently used in patent litigation. Most of the attorneys have no technical background in Brazil. This is because technical experts are key players in infringement and validity litigation. The judge, however, may also appoint a court expert whenever the facts under discussion depend on technical or scientific knowledge, which is virtually the case in all infringement and validity lawsuits. Likewise, plaintiffs and defendants may also appoint technical assistants so as to provide guidance to the court-appointed expert, and to respond to his technical conclusions.

In patent litigation, where almost every case involves technical issues, an outcome on merit will often depend on the knowledge of an expert, or sometimes several experts. It is important to note, however, that the judge has the right to decide notwithstanding the conclusions of the court-appointed expert. In other words, the court expert's report is not binding on the court's ruling.

1.5 How are arguments and evidence presented at the trial? Can a party change its pleaded arguments before and/or at trial?

Ideally, when the trial is set, the court records are already completed, and the parties and the judge have read the briefs. During trial, the parties' attorneys, their experts or witnesses will present evidence mostly orally. Each party may call up to 10 persons to testify, among witnesses and experts, but the judge may limit this number to a maximum of three for each side. The judge will question the witnesses separately and successively, starting with the plaintiff's. The party's representatives may also be called to put forward their evidence. The judge puts forward all questions and the parties may address the court with additional questions, besides the ones being made.

According to Article 264 of the Civil Procedure Code, a plaintiff cannot change his pleadings or causes of action (arguments) once the defendant is served with the complaint, unless the defendant consents. The plaintiff cannot, under any circumstances, change his pleadings or causes of action after the judge renders a decision defining the issues in the case and the scope of the evidence production phase.

1.6 How long does the trial generally last and how long is it before a judgment is made available?

Trials generally take one day, but sometimes take longer depending on the complexity of the case and on the number of experts and witnesses called by each party. After trial, the judge is expected to make a judgment in 30 days. This deadline, however, is rarely met by the judge, who may take months to render a final decision, especially in cases involving a greater level of complexity.

1.7 Are there specialist judges or hearing officers, and if so, do they have a technical background?

Specialist judges are not yet available. However, specialised IP courts have been created in recent years. In 2002, the Rio de Janeiro Federal Courts made some advances, creating four district courts (out of 47) with special jurisdiction to hear cases filed against the Brazilian Patent and Trademark Office (BPTO). These are still the only federal district courts specialised in IP matters in the country. At the appellate level, however, there have been developments. The Federal Court of Appeals for the Second Circuit, which has jurisdiction to decide appeals from Rio de Janeiro and Espirito Santo, for example, has two chambers (out of eight) specialised in IP cases. The Federal Court of Appeals for the First Circuit, with jurisdiction to decide appeals from the Federal District (Brasília) and 13 other Brazilian states, also has two chambers with jurisdiction to hear IP cases. Furthermore, the Federal Court of Appeals for the Third Circuit, with jurisdiction in São Paulo and Mato Grosso do Sul, also has specialised IP chambers (three out of 10).

At state level, all major Brazilian cities have courts specialised in commercial and corporate law, including IP. For instance, the Rio de Janeiro state court has seven state courts with jurisdiction to hear commercial law cases, including IP cases.

1.8 What interest must a party have to bring (i) infringement, (ii) revocation, and (iii) declaratory proceedings?

Infringement lawsuits must be filed by the patent owner or by its exclusive licensee vested with powers, against anyone who may be infringing the patent. As to revocation and declaratory proceedings, the law provides that "any legitimate interested party" may file them (Article 56 of the Patent Law). This...