Patent Enforcement

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, but they may also be filed in any place where acts of infringement occurred. Since Rio de Janeiro and São Paulo have trial courts specialized in IP matters, those venues are normally preferred by plaintiffs.

The Federal Rules of Civil Procedure enacted in 2015 set forth that a mandatory mediation hearing shall take place before the defendant files its reply to the complaint, unless both parties agree not to. On the other hand, arbitration is broadly used in Brazil in lieu of court proceedings, but it is not commonly employed for IP matters.

Only attorneys-at-law registered before the Brazilian Bar Association are allowed to represent parties to such a dispute.

An infringement lawsuit starts with the filing of the complaint brief, where the plaintiff must assert its claims of infringement against the accused product or process. Normally, the burden of proof falls on the plaintiff (except in the case of infringement of a process patent), who must present documentary evidence of the infringement and, advisably, technical and legal opinions. After the defendant is duly served with a summons, the court usually schedules a mandatory mediation hearing to try to achieve a settlement between the parties. If the conciliation attempt fails, the defendant is given a 15-business-day term to file its reply to the complaint, where all possible defenses shall be presented together with their supporting evidence. In an infringement case, both parties may request the court to allow the submission of further evidence during the proceeding. After the defendant files its defense and the plaintiff presents its counter-reply, the judge usually nominates a technical expert to conduct an examination and provide the court with his opinion on the technical aspects of the case. Parties may appoint 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. After the court-appointed expert delivers his opinion to the court, and parties submit their own arguments in relation to such opinion, the judge will then set a date for closing arguments (written).

Those procedures may take an average of two to three years depending on the circumstances. The plaintiff must pay court fees and, if it prevails in the end, it can be reimbursed by the defendant. 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 are normally fixed at 10–20% of the overall award of damages.

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 defense, challenging the plaintiff’s arguments and evidence.

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, as they play a key role 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. 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.

Trial hearings are very rare in Brazil. When they occur, court records are already completed, and the parties and the judge have already 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.

Plaintiffs cannot change pleadings or causes of action (arguments) once the defendant is served with a summons, 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.

Trial hearings 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 issue his decision within 30 days, but this rarely occurs. Normally, a final decision on the merits takes about six months to be rendered, especially in cases involving a greater level of complexity.

Yes, judgments are of public access and third parties can request copies of the judgment. There are judgments under seal in special circumstances, but these are not common in IP cases.

Precedents in Brazil are not binding. Nevertheless, precedents from the superior courts are often significantly persuasive to lower courts. Foreign precedents are rarely used and usually disregarded by local courts.

Specialist judges are not available. However, specialized IP courts have been created in recent years. Rio de Janeiro has four federal district courts with special jurisdiction to hear cases filed against the Brazilian Patent and Trademark Office (BPTO). In turn, the Federal Court of Appeals for the Second Circuit, which has jurisdiction to decide appeals from Rio de Janeiro, has two chambers specialized in IP cases.

At state level, all major Brazilian cities have courts specialized in commercial and corporate law, including IP. For instance, Rio de Janeiro has seven state courts with jurisdiction to hear commercial law cases, including IP cases, and São Paulo recently created two such courts.

Infringement lawsuits must be filed by the patent owner or by a licensee vested with powers to do so, 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. This requirement is interpreted by courts very broadly; sometimes, it suffices to be a competitor or to work in the same field of technology.

Yes. As long as there is uncertainty over a fact, and this uncertainty is causing an actual or imminent threat to the party’s right, a court may be requested to issue a declaratory judgment.

Yes, a party can be held liable for contributory infringement or inducement. The Brazilian Patent Law further provides that 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, is considered a crime of unfair competition.

Yes. According to the Brazilian Patent Law, a patent confers to its owner the right to prevent third parties from manufacturing, using, offering for sale, selling or importing for such purposes, without his consent, a process, or product directly obtained by a patented process. In addition, in the case of a process patent, the defendant has the burden to prove non-infringement, while in a product patent the burden of proof lies with the plaintiff.

Yes. It is possible to establish infringement by the doctrine of equivalence. The Patent Statute expressly provides that patent infringement may be found “even if the violation (…) is restricted to the use of means equivalent to the subject matter of the patent”.

Yes. Invalidity may be raised as a defense in any infringement lawsuit. Defendants often use this kind of defense argument, combined with a non-infringement argument, in their response brief.

Since Brazil has a bifurcated system, a separate lawsuit must be filed in order to invalidate a patent with erga omnes effects. In this kind of lawsuit, the BPTO is a mandatory co-defendant, together with the patentee, and because the BPTO is a federal entity, the invalidity proceeding must be filed at a Federal Court.

Post-grant (administrative) oppositions can only be filed within six months from the patent grant at the BPTO and they do not prevent the defendant from filing an invalidity lawsuit nor from raising invalidity arguments in infringement suits.

In general terms, a patent may be invalidated whenever it does not comply with any provision of the Patent Law. Besides lack of novelty and inventive step, the most common grounds for invalidity are the following: (i) lack of enablement (“the specification must describe the subject matter clearly and sufficiently so as to enable a person skilled in the art to carry it out and to indicate, when applicable, the best mode of execution”); and (ii) lack of support in the specifications (“the claims must be based on the specification, characterizing the particulars of the application and defining clearly and precisely the subject matter to be protected”).

The defendant may request the judge to stay the infringement suit, but the judge is not bound by the law to grant it. As a general rule, it usually accepts such request. However, if the validity challenge is raised when the infringement case is already in an advanced stage, the court may reject such kind of request.

The law guarantees protection to the person who, in good faith, has been exploiting the patented product or process prior to the date of filing or of priority of a patent application. The “prior user” has the right to continue the use, without onus, in the previous form and under the previous conditions.

In addition, although rarely, the laches doctrine in patent infringement lawsuits may be raised and accepted if the court is convinced that the patent owner knew about the infringing activities but delayed substantially to file the lawsuit, so as to increase potential damages.

Yes, both kinds of injunctions are available. Preliminary injunctions may be granted as long as substantive evidence is submitted, and the court is convinced of (i) the likelihood of success on the merits, and (ii) the need for an urgent decision from courts to avoid irreparable harm. In granting a preliminary injunction, courts will balance the hardships and the effect of not doing so in cases where the injunction effects are irreversible. In order to avoid irreparable damages or damages that would be difficult to recover, the judge can even grant an injunctive order to suspend the violation or act of infringement before summoning the defendant (ex parte), ordering the plaintiff to post a bond or a fiduciary guarantee in cases where he deems it necessary.

Permanent injunctions are also available and are normally granted whenever a judgment of infringement is made, although a stay on the injunction may be determined by the Court of Appeals before the appeal has been decided upon by the court.

According to the Patent Statute, loss of profits shall be determined by the most favorable to the patentee of the following criteria: (i) the benefits that would have been gained by the injured party if the violation had not occurred; (ii) the benefits gained by the infringer; or (iii) the remuneration that the infringer would have paid to the patentee for a license that would have legally permitted him to exploit the patented technology. It is possible to obtain compensation for acts of infringement which occurred between the date of publication of the application and that of the grant of the patent, or even before publication, if there is proof that the infringer has knowledge of the contents of application prior to publication.

There is no statutory provision setting forth punitive damages in Brazil and courts are usually reluctant to adopt this doctrine.

The patentee can obtain in the civil sphere a preliminary restraining order, provided for in the current Patent Law, for the immediate cessation of the patent violation. Ex parte seizure of the infringing products can also be obtained when the judge is convinced that the plaintiff’s IP rights are seriously threatened by the defendant’s infringing activities. The plaintiff can request the courts to issue orders to destroy, to buy back stock or to deliver up the infringing goods. Damages (loss of profits) can be claimed by the plaintiff and enforced against the infringer.

In addition to damages, it is possible to obtain search and seizure orders and other immediate reliefs, such as preliminary and permanent injunctions.

The court would consider granting cross-border relief depending on the circumstances; for instance, shipment details, information on the importer, or evidence that the incoming or imported product reproduces and/or infringes the patented product in Brazil. In the context of the patent, this is not a simple task for Customs Officials. A generic claim will not be sufficient to obtain relief.

The Brazilian Civil Procedure Code expressly provides for a conciliation hearing to encourage parties to reach an amicable settlement before the evidence phase and before the judgment in the infringement lawsuit. Besides this, parties may, at any time, establish negotiations for an amicable settlement, also requesting a conciliation hearing.

There is a five-year statute of limitations for patent infringement, which starts to count after the last act of infringement.

Yes. Parties can appeal the first instance judgment, and all aspects of the judgment may be reviewed by the Court of Appeals.

Infringement or validity cases may cost from US$ 60,000 (sixty thousand dollars) in a very straightforward case, to over US$ 250,000 (two hundred and fifty thousand dollars) in more complex cases, especially when infringement and validity are dealt with in the same case.

Patent Amendment

No. Amendments are not allowed after a patent is granted. However, a patentee may apply for a certificate of addition to protect an improvement or development introduced in the subject matter of the invention.

Yes, although it is very unusual. There was one case where a court determined amendments to be made in a patent claim. In such cases, the Letters Patent will subsequently be endorsed.

Yes. According to Article 32 of the Patent Law, applicants may only amend their claims until the request for examination, and provided that the amendments are supported by the initial disclosure. The BPTO has recently issued new Guidelines for amending patent applications. Voluntary amendments for correcting translation or typing errors can be made after the examination request if the specification fully supports them. Other examples of post-examination voluntary amendments that may be accepted by the BPTO are: I) inserting the context of a dependent claim into an independent one; II) restricting parameter range; or III) withdrawing an element originally presented as an alternative. The new Guidelines also indicate that elements originally included into an independent claim cannot be deleted, as this change could also imply that the scope of protection has been expanded.

The Guidelines on voluntary amendments will become an important source and reference point for Brazilian Examiners when performing substantive examination on patent applications.


Yes. License agreements are subject to recordation in the BPTO in order to produce effects against third parties and whenever payment is remitted abroad. In the process of recording, the BPTO may provide limitations upon which parties may agree. The most critical limitation is on the consideration clause. The BPTO often issues office actions questioning payment methods whenever the license agreement does not establish a “fixed amount per unit sold” or “a percentage on the net selling price”. The BPTO also limits tax deductions in order to limit the remittance of payments among colligated companies. Furthermore, the BPTO does not permit any compensation for patent applications.

Another limitation provided by the law refers to improvements. License agreements executed in foreign countries often contain a clause providing that improvements belong to the licensor, even if made by the licensee. Nevertheless, the Brazilian Patent Law determines that any improvement on a licensed patent shall belong to the person who made it, thus guaranteeing the other party the right of preference with respect to a license.

If there is an antitrust concern, the BPTO often questions non-competition clauses when the period is greater than five years after the end of the license and limits the term of the license by the respective patent term.

Recently, however, the BPTO has reduced its intervention in license agreements, thus allowing the parties to negotiate the terms thereof without many constraints.

Yes. Patents may be subject to compulsory license. There are several grounds for granting such licenses, including in cases of: abuse of patent rights or of economic power; non-exploitation of the subject matter of the patent in the Brazilian territory, or lack of manufacture or incomplete manufacture of the product. In these cases, the license can only be requested by a party with a legitimate interest, and which has the technical and economic capacity to carry out the efficient exploitation of the subject matter of the patent that should be destined predominantly for the internal market. A compulsory license, based on lack of local or incomplete manufacture, may only be requested after three (3) years of the grant of the patent.

Compulsory licenses may also be declared by the Executive Power, independent of any request, in cases of national emergency or public interest, as long as the patentee or his licensee does not meet such necessity.
Compulsory licenses will always be granted without exclusivity; sublicensing is not permitted.

Although there are numerous hypothetical situations where a compulsory licence may be granted, this kind of licence is rare. There was one single case in 2007 where a compulsory licence was granted on a pharmaceutical patent on the grounds of public interest.

Patent Term Extension

Patent Prosecution and Opposition

No. According to the Patent Statute, the following are not patentable: “I. discoveries, scientific theories and mathematical methods; II. purely abstract concepts; III. schemes, plans, principles or methods for commerce, accounting, financing, education, advertising, lottery and control; IV. literary, architectural, artistic and scientific works, or any aesthetic creation; V. computer programs per se; VI. presentation of information; VII. rules of a game; VIII. operating or surgical techniques and methods, as well as therapeutic or diagnostic methods for the treatment of humans or animals; and IX. the whole or part of natural living beings and biological material found in nature or also isolated therefrom, including the genome or germplasm of any natural living being and the natural biological processes.”

In addition, the Statute provides that the following are not patentable: “I. that which is contrary to [accepted principles of] morality and good conduct and to public safety, order and health; II. substances, matter, mixtures, elements or products of any kind, as well as any modification of their physical-chemical properties and the respective processes of obtaining or modifying them, when they result from the transformation of the atomic nucleus; and III. the whole or part of living beings, except transgenic microorganisms which meet the three requirements for patentability – novelty, inventive step and industrial application – specified in Article 8 and which are not mere discoveries.”

The grant or issue of the patent can be challenged by a third party within six months from said grant or issue date. These are known as administrative nullification proceedings or post-grant proceedings. Before the actual grant of the patent, third parties may file observations in the application. Said observations can be submitted from the publication of the application up to the conclusion of the examination (pre-grant “opposition”).

A decision rendered by the Patent Examiner rejecting a patent application may be appealed to the President of the BPTO. The final decision rendered by the BPTO may be appealed to the Federal Courts in a judicial review lawsuit.

Disputes over priority or ownership are usually resolved by the courts. A priority claim must be proved by means of a suitable document of origin, containing the number, date, title, specification and, when they exist, claims and drawings, accompanied by a simple translation of the certificate of filing or equivalent document containing data identifying the application, the contents of which will be of the entire responsibility of the applicant. If two or more authors have independently devised the same invention or utility model, the right to obtain a patent will be assured to whoever proves the earliest filing, independently of the dates of invention or creation. The withdrawal of an earlier filing without producing any effects will give priority to the first later filing.

Yes, there is. The grace period is twelve (12) months, and the disclosure of an invention or utility model shall not be considered state of the art if it occurs during the twelve (12) months preceding the filing date or priority date of the patent application when made by: I) the inventor; II) the BPTO through the official publication of the patent application filed without the consent of the inventor based on the information obtained from him or resulting from his acts; or III) third parties, on the basis of information obtained directly or indirectly from the inventor.

The term of a patent of invention shall be twenty (20) years and that of a utility model patent shall be fifteen (15) years counted from the filing date of the application. The term of protection shall be no fewer than ten (10) years for an invention patent, and seven (7) years for a utility model patent counted from the date of grant.

Border Control Measures

Yes. Customs Authorities, ex officio or at the request of an interested party, may seize infringing products entering Brazil at its borders. Nevertheless, the interested party is generally required to file a criminal or civil lawsuit within 10 days, seeking injunction relief in order to keep the importation stayed, and eventually requesting the destruction of the goods. This kind of measure is more common (and simpler) in cases of trademark infringement.

Antitrust Law and Inequitable Conduct

In theory, yes, but this is very rare in Brazil. The Brazilian antitrust watchdog (CADE) recently dismissed a complaint filed by a national association of auto parts manufacturers against three major automakers for alleged IP misuse. The case before the antitrust authority was brought after the automakers took judicial measures to enforce industrial design rights to auto parts. According to the association, such lawsuits would entail IP misuse, but the majority of CADE commissioners considered that the enforcement of IP rights grounded on statutory provisions cannot be held as misuse. In the view of Rafael Romano, partner at Daniel Legal & IP Strategy, CADE’s decision is an important leading case in Brazilian antitrust practice, since it finally clarifies, after ten (10) years, which criteria the antitrust authority might take into account when deciding future cases.

Current Developments

Update on ANVISA’s examination of pharmaceutical patent applications

On 12 April 2017, the Brazilian Health Regulatory Agency (ANVISA) and the BPTO published a version of the new joint Guidelines #1/2017. The Guidelines set out the new workflow between ANVISA and the BPTO in terms of the examination of pharmaceutical patent applications.

Article 4 of the Guidelines establishes that ANVISA will ascertain whether a patent application contravenes public health. The criterion for conflicting with public health is when a product or process presents a “health risk”. This risk is detected when a product comprises a substance that has been prohibited in Brazil, or when a process results in said substance. Accordingly, when the subject matter of the patent application is found to pose a health risk, ANVISA will deny prior approval, and will send the application back to the BPTO for further handling. Following this, the BPTO will publish the final dismissal of the application. The Interagency Ordinance is designing a new approach in pharma patent examination of products and processes of interest, under the Brazilian Government’s drug policies and with pharmaceutical assistance from the National Healthcare System (SUS). In practice, ANVISA will examine such applications and render a technical opinion as to whether the claims meet the patentability requirements under Brazilian law. ANVISA’s opinion will be directed to the BPTO to serve as a basis for third-party observations, as provided in Article 31 of the Brazilian Patent Law.

The novelty brought by the Ordinance is in Article 9, which creates an Interagency Group comprising ANVISA and the BPTO. The Group seeks to “harmonize” its understanding of the application of patent law and practice in certain fields, such as: Markush claiming; selection inventions; the patentability of new uses; salt polymorphs and antibodies; as well as other issues inherent to the pharma industry.

Fast-track examination

During the last two years, the BPTO has issued important Resolutions directed to priority or fast-track examination of patent applications. Resolution 14/2015 enacted a Patent Prosecution Highway (PPH) Pilot Program for applications covering oil and gas technology between the US and Brazilian Governments. In a similar vein, Japan and Brazil have negotiated a PPH Pilot Program (Resolution 184/2017) for information technology, but to qualify for this program, the applications have to be classified under specific international patent classification symbols. Moreover, Resolution 175/2016 provides permanent fast-track examination for green technology inventions following four consecutive Pilot Programs. Very recently, the BPTO published Resolution 191/2017 regulating fast-track examination for applications filed by science and technology institutes.

Priority examination or fast-track examination is available for the following situations:

  • applications filed by small entities;
  • applications filed by senior citizens;
  • applications filed by citizens suffering from health conditions;
  • applications infringed by third parties;
  • pharma applications relating to treatment of certain diseases, such as cancer, AIDS and neglected diseases;
  • green technology applications;
  • applications under the PPH Pilot Program; and
  • applications filed by science and technology institutions.
Proposal to eliminate the backlog of patent applications

The Brazilian Government is considering an emergency measure to eliminate the Patent Office’s chronic backlog problem by automatically granting 230,000 pending applications by 2020. The Government has called this proposed emergency measure an “extraordinary solution” to the problem, and a draft of the plan will be introduced for public discussion soon.

The current proposal entails a simplified examination procedure in which the Patent Office would automatically grant unopposed applications filed before 2014 but yet to be examined by them. This measure, however, includes neither pharmaceutical applications nor divisional applications where the parent application has been examined.

This “extraordinary solution” does have an at-will applicant opt-out clause, and interested third parties would have up to 90 days to file pre-grant oppositions after an application is pre-approved for an automatic grant.

Brazil’s high-profile political corruption investigation “Operation Car Wash” has completed its fourth year, and has shaken the Brazilian Government to its core. Brazil’s economy is now showing signs of recovery, and consumer and business confidence is rising. The approval of fiscal reform, lower inflation and declining interest rates should push the country towards gradual recovery, but improvement may only materialize by the end of 2018. Companies will probably continue to seek IP protection in Brazil as the market continues to be important, regardless of the major obstacle of the BPTO’s inadequate infrastructure, which has resulted in the worst backlog ever of patent examinations.

There is a plan to increase the number of patent examiners in 2018, as part of the BPTO’s ongoing drive for efficiency. The number of annual patent filings has remained stagnant in the last two years but has not decreased significantly so as to raise concern. Statistics show that deep-pocket investors/companies who have been established for many years in Brazil will continue to invest, to protect innovation.

The new Civil Procedure Code, which regulates the proceedings of most civil lawsuits, and which became effective in March 2016, has proven to be less bureaucratic and has brought fast and effective solutions to legal disputes. Judges and parties in a case may establish a specific timetable for judicial proceedings. This piece of legislation is a breakthrough in enforcement. It clearly shows a trend of a growing awareness of the importance of IP rights and the consequences of third parties trespassing on these rights. As legal disputes are expected to be decided expeditiously, judges should resort to damages as provided for in Brazil’s Patent Law.

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