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WIPO - PCT Applicant's Guide BR - Brazil National Institute of Industrial Property (Brazil)

Error information warning confirmation, useful information, international phase, annex b - information on contracting states or intergovernmental organization, annex c - receiving office, annex d - international searching authority, annex e - international preliminary examining authority, annex l - deposits of microorganisms and other biological material, national phase, summary of requirements for entry into the national phase, the procedure in the national phase.

Patent filing in Brazil:

All you need to know about Brazil patent office

All you need to know

Download our ultimate filing guide to learn the specific requirements for filing in LATAM's top 7 countries

Building a strong patent portfolio starts with your filing strategy. For patent filing in Brazil, the largest economy in the region, you need to know the local patent office requirements . This guide will take you through all filing requirements and important stats in Brazil.  

Brazil patent filing requirements

When conducting a PCT national phase patent filing in Brazil , you are required to submit the following documents:  

• International Application.
• Portuguese translation of the International Application (specification and claims).
• Drawings (if these exist and are necessary for support, you must submit them with filing given you will not be able to submit them later).
• Amendments made under Art. 19 or 34, and corresponding Portuguese translations.
• Certificate of Deposit of Biological Material (if applicable).
• Sequence Listings (if applicable).
• A signed copy of the Power of Attorney (no legalization required) – NOT MANDATORY FOR FILING BUT HIGHLY RECOMMENDED TO AVOID A FORMAL OFFICE ACTION.

For direct (Paris Convention) filings only 

• A certified copy of the Priority Document is required three (3) months after filing. A simple Portuguese translation thereof is also required.
• A simple copy of the Assignment Document is required three (3) months after filing. A simple Portuguese translation thereof is also required.

Brazil translation requirements

Even though Portuguese translation is mandatory, an English version may be submitted with patent filing in Brazil . However, the title, abstract and claims must be in Portuguese with filing. The entire Portuguese translation must then be submitted up to 30 days after filing.  

For direct filings, simple Portuguese translation of priority documents and assignments must be filed three (3) months after filing.  

Term for filing

In Brazil, the deadline for filing the national phase requirements under PCT Article 39(a) is 30 months from the priority date.

Patent term, grant, and maintenance

Once the patent is granted, payment of Patent Grant fees is required. These must be paid within 60 days from the issuance notice.

In Brazil, maintenance fees apply for patents pending and must be paid annually starting the 3rd year from the filing date.

On the other hand, the patent term is 20 years from the international filing date.

Terms for requesting examination

After filing a patent application, an examination must be requested to decide whether the application meets the requirements to be granted a patent. In Brazil, an examination must be requested within 36 months from the international filing date for a PCT application, or the Brazilian filing date for conventional applications.

Patent Prosecution Highway (PPH)

The PPH (Patent Prosecution Highway) is a procedure that speeds up the processing of a patent application, based on the favorable result obtained in a foreign office, with which a cooperation agreement has been reached.

PPH is available in Brazil through the following agreements: PROSUL (Latin America), United States, Japan, China, EPO (Europe), Korea, France, among others.

There is a yearly 800 PPH request limit.

The first annuity payment must be made between 24 months after the filing date and the end of the 3rd month of the 3rd year after the patent is filed and it must be paid in this time window every year thereafter. 

If you fail to pay the annuity fee within this time frame, there is a grace period of six months after the deadline, but it has additional costs. If you do not pay the fees during this period, your application will be abandoned, and if you already have a patent grant, the patent registration will be extinguished. Therefore, it is very important to make these payments on time. 

Local patent office

For patent filing in Brazil you must address the local office : the Brazilian National Institute of Industrial Property (INPI).   

Their website is: https://www.gov.br/inpi/en

Reinstatement of rights

In Brazil, requests for restoration of priority rights due to lapsed national phase entry are accepted in accordance with PCT Rule 49.6

Prosecution backlog improvement

Brazilian prosecution backlog has certainly improved in the last five years due to pivotal campaigns reducing average prosecution from 11.5 to about 8 years.

As a result, the number of decisions published by the INPI went from 7,152 in 2015 to 51,588 in 2020, representing an increase of more than 700%.

Brazil Patent Statistics

Non-resident patent filings in Brazil have surged since 2020, capturing 82.2% of total filings (up from 78.3% in 2020). Brazil’s booming economy, strong IP protection, and participation in the PCT – remaining the preferred filing route over Direct/Paris Convention – have attracted foreign innovation. This trend reflects foreign companies’ growing confidence in Brazil’s potential.

Since 2020, China’s non-resident applications in Brazil soared 38%, propelling it past Japan and Germany to rank #2 in 2022. Notably, Japanese filings saw a dramatic decrease in the same period, causing it to fall from #2 to #5. Meanwhile, the US remains the largest filer with steady growth, while Europe’s largest economies (Germany, Switzerland, and France) showed flat or declining trends. This suggests growing trust in Brazil’s innovation potential, particularly from smaller economies.

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Patent Litigation 2024

Law and practice, trends and developments.

Kasznar Leonardos provides tailored solutions to the most complex IP issues, both nationally and internationally, with a deep understanding of different cultures and business industries. Specialised in the management of intellectual assets, the multidisciplinary team boasts 20 partners and over 300 skilled attorneys and technical experts from several fields, with correspondents in every state of Brazil and a broad international network. Kasznar acts as legal adviser on contractual matters, as an industrial property agent with the Brazilian Patent and Trade Mark Office (BRPTO), and its lawyers, arbitrators and mediators act in litigation and extrajudicial dispute resolution. The firm is a 360º IP Boutique, with experts on patent, trade mark, industrial designs, geographical indications, plant varieties, copyright, trade dress, unfair competition, trade secrets, technology transfer, franchising and licensing, licence compliance, anti-piracy, business law, regulatory law, digital law, marketing and entertainment law, sports law, and fashion law.

1. Intellectual Property Rights and Granting Procedure

1.1 types of intellectual property rights.

The protection of rights relating to inventions in Brazil shall be assured by means of the issuance of patents for inventions (new technologies) and utility models (a new shape or arrangement in practical use objects). Patent rights, as well as other IP assets, are guaranteed by the Federal Constitution and governed by the Brazilian Industrial Property Law (Law No 9,279/96 or LPI), in accordance with applicable international treaties.

Invention Patents

A product or a process can be patentable as a patent for invention if (Article 8, LPI):

• it meets the requirements of novelty and inventive step; and
• it is susceptible to industrial application.

An invention patent has a protection term of 20 years from the date of filing.

Utility Models

An object of practical use, or a part of such an object, will be patentable as a utility model if:

• it is susceptible to industrial application;
• it presents a new shape or arrangement; and
• it involves an inventive act resulting in a functional improvement in its use or manufacture.

A utility model has a protection term of 15 years from the date of filing.

Ineligible Patent Subject Matter

Articles 10 and 18 of the LPI determine that the following shall not be patentable as invention or utility model:

• discoveries, scientific theories and mathematical methods;
• purely abstract concepts;
• schemes, plans, principles or methods of a commercial, accounting, financial, educational, or advertising nature;
• literary, architectural, artistic and scientific works or any aesthetic creation;
• computer programs per se;
• presentations of information;
• rules for games;
• techniques and methods for operations or surgery or therapeutic or diagnostic methods, for use on the human or animal body;
• all or part of natural living beings and biological materials found in nature, or isolated therefrom, including the genome or germ plasm of any natural living being and the natural biological process;
• anything contrary to morality, decency or public safety, order and public health;
• substances, materials, compounds, elements or products of any kind, including the modification of their respective physical-chemical properties and the respective processes for obtaining or modifying them, when they result from the transformation of the atomic nucleus; and
• living beings, whole or in part, except for transgenic micro-organisms meeting the three requirements of patentability – novelty, inventive step and industrial application – provided for in Article 8 and which are not mere discoveries.

For the purposes of the LPI, transgenic micro-organisms are organisms, except for plants or animals, whole or part, that due to direct human intervention in their genetic composition, express a characteristic that cannot be normally achieved by the species under natural conditions.

1.2 Grant Procedure

Anyone seeking protection for an invention in Brazil shall apply to the Brazilian Patent and Trade Mark Office (BRPTO). The proceeding is governed by the LPI and the BRPTO’s guidelines. 

An invention shall be patentable if it meets the requirements of novelty, inventive step and industrial application. On the other hand, an object of practical use, or part thereof, shall be patentable as a utility model if it is intended for industrial use, presents a new shape or arrangement, and involves an inventive step, resulting in functional improvement in its use or manufacture.

1.3 Timeline for Grant Procedure

Length of Grant Procedure

Currently, it takes six years on average to have a patent issued by the BRPTO. However, the length of the procedure may vary considerably according to the field of the invention. Fast-track procedures are available in several situations, including specific Patent Prosecution Highway programmes with the USPTO, JPO and other foreign patent offices.

Moreover, the average length of grant procedure has diminished since 2019, when the BRPTO established a programme to fight the backlog.

This programme foresees several actions to expedite granting procedures, including a special procedure by which the applicant can benefit from BRPTO patent searches already carried out by foreign patent offices, eliminating the need for a new search by the BRPTO. As over 80% of all patent applications filed in Brazil belong to foreign applicants that have already had their applications examined abroad, this new procedure is expected to considerably reduce the examination delay in Brazil.

According to the BRPTO, there were 149,912 patent applications filed until 2016 which benefited from the programme to fight the backlog pending examination in August 2019. By 4 January 2024, this backlog was reduced to 3,573 patent applications. Of the remaining patent applications, 1,960 are from the chemical field, the one with the greatest number of applications pending examination. Due to the success of the programme, the BRPTO has already started the examination of patent applications filed since 2017 in specific technical areas.

Representation

The patent application may be filed by the inventor or the right-holder (Article 216, LPI). As per Article 217, a person domiciled abroad is required to have a duly qualified attorney domiciled in Brazil with powers to represent such a person or entity administratively and judicially – including the right to receive summons.

Usually, the following official fees are due (bearing in mind an exchange rate of approximately USD1 = BRL4.90).

Approximately USD36 when the patent application is filed before the BRPTO (for a patent for an invention or for a utility model).

Approximately USD120 for a patent for the request for examination of an application for a patent (for a patent for an invention containing up to ten claims).

Approximately USD78 for a patent for a utility model.

For annuities within the ordinary term, the fees are as follows.

• For a patent for an invention:
• pending application – approximately USD61;
• granted patent – depending on the age of the patent, between approximately USD160 and USD411.
• For a utility model:
• pending application – approximately USD41;
• granted patent, third to sixth year – depending on the age of the patent, between approximately USD83 and USD248.

1.4 Term of Each Intellectual Property Right

Patents are granted for 20 years as from the filing date and utility models are granted for 15 years as from the filing date, according to Article 40 of the LPI.

It is important to note that the automatic minimum ten-year term counted from the date of the grant, which used to protect applicants from the excessive delay caused by the BRPTO, is no longer applicable in Brazil. Such provision expressed by means of the sole paragraph of Article 40 was deemed unconstitutional by the Supreme Court in 2021.

As a reaction to the removal of the automatic minimum ten-year term safeguard, a number of owners of Brazilian patents have initiated lawsuits seeking compensation for term unjustifiably lost due to the PTO’s delay. There is still no official stance of the Brazilian judiciary in regard to the admissibility of PTA lawsuits. Currently, there is still no binding interpretation given to the PTA question, nevertheless recent decisions by trial and appellate courts reveal a trend by which plaintiffs seeking term adjustment seem to be fighting an uphill battle. A conclusive answer by a superior court should provide a clear stance either encouraging or dissuading those who wish to adjust the terms of their patents.

1.5 Rights and Obligations of Owners of Intellectual Property Rights

A patent shall afford its owner the following principal rights.

• Preventing others from producing, using, offering for sale, or importing for such purposes, without their consent, a product that is the subject matter of a patent or the process or product directly obtained by a patented process, as well as their respective equivalent product or process.
• Preventing third parties from contributing to anyone carrying out the acts mentioned above.
• Licensing the right of use of the patent by third parties and transferring the ownership of the patent.
• Being indemnified for unauthorised exploitation of the subject matter of their patent, including exploitation that occurs between the date of publication of the application and the date of issue of the patent.
• Being indemnified for the damages in respect to acts that infringe industrial property rights directly, by equivalence and/or by contribution.

In return, the patent owner’s obligation is to pay the annual patent fees and use the patent in a lawful manner within Brazil.

Although it is rare, some of the patentee’s rights can be mitigated and additional obligations can be created, such as occurs by means of the compulsory licence (which, so far, only happened once, since the enacting of the current statute, in 1996).

Preliminary injunctions are available to patent owners in Brazil for immediately ceasing infringement acts (paragraph 1, Article 209, LPI). Such a remedy needs to be requested from the courts, which will grant it upon assessing the existence of prima facie evidence of infringement and risk of irreparable harm.   

Patent owners are not obliged to provide public information, such as patent listings or use codes, in relation to certain products or processes in Brazil. Even though it is not mandatory, public information may be available in relation to products or processes comprised of self-declared standard-essential patents (SEPs) for certain standards within the telecommunications sector. If applicable, such information will probably be available before standard-setting or standard-developing organisations (SDO), such as the Brazilian Association for Technical Standards.

1.6 Further Protection After Lapse of the Maximum Term

There is no further protection available. Once the patent is expired, the subject matter enters the public domain.

1.7 Third-Party Rights to Participate in Grant Proceedings

Third parties may oppose the granting of a patent by submitting relevant documents and information that would render the invention not patentable. This can be done:

• between the publication of the application and the end of the examination by the Patent Examiner (Article 31, LPI);
• within a period of 60 days after publication of any administrative appeal filed by the applicant from a first instance decision by the Patent Examiner (Article 231, LPI); and
• in an administrative nullity proceeding, to be filed within six months counted from the grant of the patent (Article 51, LPI).

1.8 Remedies Against Refusal to Grant an Intellectual Property Right

According to Article 212 of the LPI, any decision rendered by the BRPTO can be challenged through an administrative appeal. If the patent examiner issues a decision rejecting the patent application, it is possible to present an administrative appeal to the President of the BRPTO within a period of 60 days after the publication of the decision. If such appeal is not successful, the applicant may challenge that final decision of the BRPTO before the federal courts.

Moreover, the Brazilian legal system also permits any decision of the public administration to be discussed before the courts within a period of five years (Article 1, Decree No 20,910/1932 and Article 54, LPI). This is because administrative decisions (eg, rulings rendered by the BRPTO) are subject to judicial review. In this sense, a lawsuit against a decision rendered by the BRPTO can be filed during the pendency of the administrative proceeding, even when an administrative appeal is still pending a decision.

1.9 Consequences of Failure to Pay Annual Fees

According to Article 84 of the LPI, the applicant and patent owner shall be required to pay annual fees as from the beginning of the third year after the date of filing for the patent. The payment of the annual fee shall be made within the first three months of each annual period, but it may also be made, in an extraordinary term, within the following six months on payment of an additional fee.

In the case of a failure to pay the annual fee, the application will be deemed extinct or, if already granted, the patent will be extinguished (Article 86, LPI). It is important to note that in one way or another the patent applicant/holder shall be previously notified by the BRPTO.

Regarding the measures available to remedy such consequences, note that the patent application and the patent may be restored at the request of the applicant or patent owner within three months after notification of the lapse of the patent. To obtain a patent restoration, the owner must pay a restoration fee (approximately USD90) as well as any previous fees due. If this procedure is not followed the application will not be valid.

1.10 Post-grant Proceedings Available to Owners of Intellectual Property Rights

After being granted, the patentability of one or more claims can be reviewed by the BRPTO.

A post-grant review proceeding begins with the filing of a petition within six months after the grant of the patent. It can be instituted ex officio by the BRPTO or requested by a third party (Article 51, LPI). The BRPTO will issue a new opinion regarding the patentability of the patent and will notify the patentee and the applicant to reply within a joint 60-day term (Article 53, LPI). Then the review will be decided by the President of the BRPTO, finishing the administrative instance (Article 54, LPI). The patent does not have its effects suspended during the proceedings, meaning that the rights derived from the patent are enforceable while the post-grant review procedure is pending.

In a post-grant review, a patent can be voided on the following grounds:

• the absence of any of the statutory requirements;
• the insufficiency of the written description;
• unsupported claims;
• the extent of the scope of the application as originally filed; and
• the absence of any of the essential formalities for issuance were omitted during prosecution.

2. Initiating a Lawsuit

2.1 actions available against infringement.

Patent infringement in Brazil can be tackled by means of a civil and/or a criminal action.

As in Germany and many other countries, Brazil adopts a bifurcated system so that nullity and infringement are ruled on by different jurisdictions. Patent infringement actions, civil or criminal, are within the statutory authority of state courts.

In general, these lawsuits must be filed before the court of the place where the defendant has their main business or where the infringement happened, provided that other civil procedure rules are observed.

2.2 Third-Party Remedies to Remove the Effects of Intellectual Property

The main remedies available for third parties to remove the effects of intellectual property rights are post-grant review proceedings, nullity lawsuits and compulsory licences. In addition, the nullity of a patent can also be argued as a means of defence in the dockets of an infringement lawsuit (paragraph 1, Article 56, LPI).

Nullity Lawsuit

The annulment of a patent can also be sought before the Federal Trial Courts (under the same grounds as a post-grant review – see 1.10 Post-grant Proceedings Available to Owners of Intellectual Property Rights ) and the BRPTO’s participation is mandatory (Articles 56 and 57, LPI). The judicial nullity action can be filed at any time during the term of a patent by the BRPTO or any legitimately interested party.

After the filing of the lawsuit, the BRPTO is summoned to answer the initial complaint and can either maintain its opinion on the validity of the patent claims or review its opinion by agreeing with the nullity.   

Nullity argument in infringement lawsuit dockets

Paragraph 1, Article 56 of the LPI states that the nullity of a patent can be argued at any time as a matter of defence in an infringement lawsuit. The eventual removal of the effects of the patent rights ordered by a state judge in an infringement lawsuit are restricted to the parties involved in the infringement proceeding (inter partes effects). Although Brazilian courts are not unanimous regarding the acceptance of nullity as a means of defence in infringement lawsuits, there is no binding precedent on this issue. In this sense, case law remains inconclusive – the Superior Court of Justice, for instance, has issued rulings both for and against this possibility. That said, it is still a mechanism available to (temporarily) remove the effects of patent rights. 

Compulsory Licences

Compulsory licence is a mechanism which allows the use of patent rights without the consent of their owner. It is governed by Articles 68–74 of the LPI.

A patentee will be subject to having their patent licensed compulsorily if they exercise the rights resulting therefrom in an abusive manner or by means of abuse of economic power that is proven under the terms of the law by an administrative or court decision. The following situations may also result in a compulsory licence: 

• non-exploitation of the subject matter of the patent in Brazil, unless local manufacture of the product is proven to not be economically feasible;
• commercialisation that does not meet the market’s demand;
• when the use of a patent depends on licensing another patent, the subject matter of the dependent patent characterises substantial progress from the prior art and no agreement is reached between patent holder and licensee; and
• national emergency and protection of public interest.

Conversely, no compulsory licence shall be granted when the patent owner is able to demonstrate that:

• the lack of use of the invention in Brazil occurred for legitimate reasons;
• there have been serious and effective efforts to prepare for use; or
• the lack of manufacture or commercialisation occurred due to a legal obstacle.

2.3 Courts With Jurisdiction

Bifurcated System

Brazil adopts a bifurcated patent litigation system. Patent infringement lawsuits fall within state jurisdiction, while nullity actions must be heard by federal courts (due to the mandatory presence of the BRPTO). Both the state and federal courts have trial and appellate levels.

There are 27 state courts in Brazil (one for each of the 26 states and another for the Federal District) and the State Court of São Paulo is responsible for most of the complex infringement and contractual litigations involving patents. The Federal Court of Appeals for the 2nd Circuit, located in Rio de Janeiro, is the most relevant of the five federal courts in terms of patent litigations involving the BRPTO. 

The Superior Court of Justice (STJ) has nationwide jurisdiction and hears challenges addressing violation of the federal laws (eg, the LPI) from the State Court of Appeals and the Federal Court of Appeals.

The Supreme Court of Justice (STF) is the highest court in Brazil and has jurisdiction over patent cases where they concern constitutional matters.

Therefore, the courts with jurisdiction over patent litigation are:

• at first level, the trial court (state or federal);
• at second level, the Court of Appeals (state or federal); and
• at the highest levels, the Superior Court of Justice (STJ) and the Supreme Court of Justice (STF).

Specialised IP Courts

Although it is not a rule across the country, the courts that hear most patent cases do so using judges/panels specialised in IP to preside over IP cases.

The Federal Court of Appeals for the 2nd Circuit (TRF2) has two specialised panels with four appellate judges, each of which presides over IP cases. At the federal lower courts, five courts are responsible solely for IP and pension law cases.

Regarding specialisation within the state courts, the Sao Paulo State Court of Appeals has one of the most technical bodies of experts in IP matters, counting eight specialised business courts at the trial level (two in the central region and six in other administrative regions) and two business courts of appeals. On the other hand, the State Court of Appeals of Rio de Janeiro has just started the process of having a chamber specialised in IP. Thecourt has nominated the first three appellate judges to take part in the specialised chamber amongst the 180 appellate judges acting at the court. At the trial level, IP cases are heard by seven courts specialised in business matters.

2.4 Specialised Bodies/Organisations for the Resolution of Disputes

Although the Brazilian Civil Procedure Code (Law No 13,105/2015) encourages parties to settle, and provides that judges, attorneys and other stakeholders shall stimulate ADR proceedings, there is no specialised body in ADR for IP matters within the courts. 

The most prominent and the only specialised chamber for dispute resolution in Brazil regarding IP matters (including domain name conflicts), named CSD–PI, is managed by the Brazilian Association of Intellectual Property (ABPI) – the Brazilian branch of AIPPI.

2.5 Prerequisites to Filing a Lawsuit

Patent infringement lawsuits in Brazil can be filed in compliance with the Brazilian Civil Procedure Code and there are no prerequisites (eg, previous negotiations between the parties) to filing a patent lawsuit. However, warning letters are usually issued by right-holders and are important to define the date on which the offender was informed of the violation for indemnification purposes in a future lawsuit.

2.6 Legal Representation

Parties in intellectual property matters must be represented by a lawyer. The parties cannot act as plaintiffs or defendants before Brazilian courts without a lawyer.

Foreign companies can sue in Brazil with or without headquarters in the country as long as they are represented by a Brazilian attorney with powers to do so.

2.7 Interim Injunctions

Interim injunctions are available. An interim injunction may be granted by the judge when there is prima facie evidence of infringement and risk of irreparable harm (Article 300, Brazilian Civil Procedure Code and paragraph 1, Article 209, LPI).

The judge must also weigh up the hardship caused by the decision granting the injunction, as opposed to the hardship caused by not granting it. The plaintiff may be required to provide a bond or a fiduciary guarantee if the judge deems it necessary.

If an interim injunction is eventually revoked, the plaintiff will be liable for damages possibly supported by the defendant due to the injunction (item III, Article 302, Brazilian Civil Procedure Code). The damages shall be sought in a separate lawsuit filed by the defendant.

2.8 Protection for Potential Opponents

A potential defendant may appeal against an interim injunction. It is also possible to require a bond to be posted by the patent owner; however, it is up to the judge to determine whether the party should submit a bond, and its value.

Additionally, according to the Brazilian Civil Procedure Code, the party that requests the injunction is responsible for any injury that the enforcement of the injunction causes the other party.

Alternative steps that may be taken by the potential opponent are to:

• file a non-infringement declaratory action, aimed at obtaining a court decision attesting that there is no infringement; or
• file a separate patent annulment lawsuit before the federal courts, aimed at obtaining a court decision attesting that the patent is null or suspending the effects of the patent at least between the involved parties.

2.9 Special Limitation Provisions

According to Article 225 of the LPI, proceedings for damages suffered due to the violation of industrial property rights may not be brought before the courts after five years, while the usual deadline for a legal action on the terms of the Brazilian Civil Code is ten years.

Actions against the BRPTO in general need to be filed within five years as set forth by Article 1 of Decree 20,910/32.

2.10 Mechanisms to Obtain Evidence and Information

The Brazilian Civil Procedure Code provides for an early production of evidence procedure, by which the interested party can ask the court to determine the search and seizure of relevant documents as well as the infringing products. Such proceedings may also be used to seek a technical opinion from the court-appointed expert to prove the infringement, or even to hear witnesses. The pieces of evidence collected under this proceeding may be used in future lawsuits, if convenient.

During the course of an infringement lawsuit, besides the evidence brought by the parties, the judge shall appoint a court expert to work with the technical assistants named by the parties in order to produce an unbiased technical opinion to provide the judge with the technical grounds for deciding the case. 

There are no discovery proceedings in Brazil.

2.11 Initial Pleading Standards

There are no special provisions for lawsuits in intellectual property proceedings. The same pleading standards as in other civil litigation apply.

Concerning infringement lawsuits and bearing in mind that a request for an ex parte preliminary injunction is sought, it is essential that the plaintiff presents robust evidence of infringement. In this sense, technical and legal opinions from the most prominent Brazilian and international experts are key.

2.12 Representative or Collective Action

The Brazilian legal system permits class actions for patent proceedings in certain situations. If damage is caused to the public as a whole or to the honour or dignity of a racial, ethnic or religious group, a civil action may be filed by public prosecutors or by any public group that is affected (Law No 7,347/85). The decision in this civil action will bind everyone, unless the decision is to dismiss the action on grounds of lack of proof, in which case anyone can file an individual complaint. In the last 20 years, there have been several important civil actions filed by ABPI (the Brazilian Association of Intellectual Property) and ABAPI (the Brazilian Association of Intellectual Property Attorneys) regarding the interpretation of several aspects of IP Law and also challenging acts of the BRPTO.

2.13 Restrictions on Assertion of an Intellectual Property Right

Article 45 of the LPI establishes that a person who in good faith benefited from the patent within Brazil, prior to the filing or priority date of a patent application, shall be entitled to continue receiving such benefits under the same form and conditions, without incurring liability. Thus, the owner of the patent cannot prohibit the use of the patent by a third party acting in good faith.

In addition, Article 43 of the LPI establishes certain acts and circumstances that the patent owner cannot oppose.

• Acts carried out privately and with no commercial purpose by unauthorised third parties, provided that these acts do not prejudice the economic interests of the patent owner.
• Acts carried out by unauthorised third parties for experimental purposes, if related to studies or scientific or technological research.
• The preparation of a medicine in accordance with a medical prescription in individual cases, and carried out by a qualified professional, or the medicine thus prepared.
• A product manufactured in accordance with a process or product patent that has been placed on the internal market directly by the patent holder or with his or her consent.
• Other persons who, in the case of patents related to living matter, use the patented product, without economic purpose, as an initial source of variation or propagation to obtain other products.
• Other persons who, in case of patents related to living matter, use, place in circulation, or market a patented product that has been lawfully placed on the market by the owner of the patent or their licensee, provided that the patented product is not used for commercial multiplication or propagation of the living matter concerned.

3. Infringement

3.1 necessary parties to an action for infringement.

The plaintiff can be the owner of the intellectual property or the licensee when the patent licence agreement expressly foresees it and if the agreement is recorded by the BRPTO. In such cases, the defendant is the alleged infringer.

3.2 Direct and Indirect Infringement

Direct infringement occurs when all the elements of a patent claim granted by the BRPTO are violated and an indirect infringement occurs when, although not all the elements of the claims of the patent are literally infringed, the offender uses equivalent means to the subject matter of the patent.

Although Article 186 of the LPI sets forth that a crime against a patent of invention is committed even if the violation does not affect all the claims of the patent or if it is restricted to the use of “means equivalent” to the subject matter of the patent, the statute does not define what such means would be. In this sense, the parties shall rely on case law and the work of legal scholars to prove the (non)violation by equivalence.

3.3 Process Patents

According to Article 42 of the LPI, a patent confers on its owner the right to prevent third parties from manufacturing, using, offering for sale, selling, or importing for such purposes a process or product directly obtained by a patented process or from contributing to the practice of these acts by other parties, without their consent. Therefore, a process patent infringement occurs when a third party uses means or processes that are the subject matter of a patent of invention, without the authorisation of the patentee.

In a process patent infringement lawsuit, the burden of proof can be shifted by the trial judge to the accused party, which will be required to prove that the process used to obtain a certain product owned or held by them is different from that protected by the patent (paragraph 2, Article 42, LPI and paragraph 1, Article 373, Brazilian Civil Procedure Code).

3.4 Scope of Protection for an Intellectual Property Right

The scope of protection of a patent is determined by the claims as granted by the BRPTO, and it is interpreted in accordance with the state of the art at the date of filing, and with the history of the prosecution of the application.

3.5 Defences Against Infringement

Apart from the non-infringement of the patent, other usual defences against patent infringement include:

• experimental use;
• nullity of the patent; and
• abuse of dominant position/failure in the obligation to offer fair, reasonable and non-discriminatory (FRAND) licensing opportunities related to SEPs and patent exhaustion.

3.6 Role of Experts

As prescribed by Article 156 of the Civil Procedure Code, judges shall be assisted by experts whenever the facts depend on technical or scientific knowledge.

Experts can be appointed by the court or be appointed consensually by the parties. It is also possible that more than one unbiased expert is appointed, especially when the patent in question involves multiple fields of knowledge. 

The court expert will be required to provide the judge with a full report with their opinion on any questions raised by the parties (and allowed by the judge), as well as on questions possibly raised by the judge. After the judge nominates the court expert, the parties shall indicate their own technical assistants, who will co-operate with the court expert.

Although judges are not obliged to follow an expert’s opinions when ruling on cases, courts tend to rely on technical opinions, which play an important role in patent infringement actions.

3.7 Procedure for Construing the Terms of the Patent’s Claim

In Brazil, there is no separate phase or procedure to construe the claims. Instead, it is up to the court and the court-appointed expert to determine which is reasonably within the scope of the patent protection.

As set forth by Article 41 of the LPI, the scope of the protection conferred by the patent shall be determined by the content of the claims and will be construed based on the specifications and drawings. 

In Brazil, claims must be worded using the connective “characterised by”. All features following “characterised by” are within the patent scope. When there is any doubt on the meaning of a word used after the expression “characterised by”, the judge and/or the court-appointed expert must use the description of the patent to properly interpret the scope of the patent.

3.8 Procedure for Third-Party Opinions

Depending on the relevance, specificity, or wider social repercussions of a case, third parties can be heard as amici curiae in patent lawsuits. Such participation can be requested by both plaintiff and defendant, as well as by the person or entity seeking to be heard. Judges also have the power to nominate amici curiae ex officio (Article 138, Brazilian Civil Procedure Code). As a rule, amici curiae cannot appeal.

Third-party opinions can also be provided by independent experts or consultants directly to one of the parties, who will be able to file such opinions as documentary evidence, without the need of direct participation by the third party in the dispute.

4. Revocation/Cancellation

4.1 reasons and remedies for revocation/cancellation.

A patent may be invalidated if granted contrary to any of the provisions of the LPI, particularly if it lacks novelty, inventive step, or industrial application or does not disclose the full contents of the invention.

There are two possible ways of obtaining the declaration of nullity of a patent (see 1.10 Post-grant Proceedings Available to Owners of Intellectual Property Rights and 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property ):

• by way of a post-grant review request before the BRPTO, to be filed within six months of the issuance of the patent; and
• by way of a judicial nullity action before the federal courts, to be filed at any time during the life term of the patent.

4.2 Partial Revocation/Cancellation

Partial revocation or cancellation is possible. According to Article 47 of the LPI, the nullity of a patent may apply to all the patent claims or to part of the claims. However, in case of a partial nullity it is necessary that the remaining claims constitute patentable subject matter themselves.

4.3 Amendments in Revocation/Cancellation Proceedings

Amendment is possible in revocation or cancellation proceedings, but it is unusual. According to Article 32 of the LPI, the amendments may be proposed by the applicant until the time of the request for examination of the patent application. Amendments to broaden the scope of the claims are not allowed.

4.4 Revocation/Cancellation and Infringement

Revocation or cancellation and infringement cases are not heard together due to the bifurcated nature of the Brazilian system (see 2.3 Courts With Jurisdiction ).

5. Trial and Settlement

5.1 special procedural provisions for intellectual property rights.

The LPI lays out certain special procedural provisions for lawsuits in patent proceedings.

According to paragraph 2, Article 56, the judge may grant an injunction suspending the effects of the patent if appropriate procedural requirements are met upon registration. The injunction request can be filed at any time during the litigation and it is usually decided within a short term due to its urgent nature. The injunction decision rarely requires fact witnesses; however, expert reports are commonly provided by the interested party. The decision on the injunction request is rendered by the trial judge and can be challenged through an interlocutory appeal to the Court of Appeals.

According to Article 57, annulment lawsuits shall be tried by the Brazilian Federal courts and the BRPTO is a mandatory defendant, together with the patent owner, even though it is authorised to agree with the plaintiff’s claims and request that the patent be declared invalid by the judge.

According to paragraph 1, Article 57, there is a longer term (60 days, instead of the standard 15-day term) for the patent owner to submit its reply to an annulment lawsuit.

According to Article 210, the amount of damages shall be defined at a later stage (liquidation of damages phase) based on the most beneficial of the following criteria at the plaintiff’s discretion:

• revenue lost by the plaintiff due to the infringement;
• revenue obtained by the defendant due to the infringement; or
• amount of a hypothetical licence agreement between the plaintiff and the defendant for the regular use of the infringed patent.

The plaintiff’s choice shall be made by the beginning of the liquidation of damages phase, which is expected to last around two years after the final decision on the merits becomes res judicata. The liquidation of damages usually requires an accounting expert to assist the judge to determine the amount of damages.

5.2 Decision-Makers

Patent cases are heard by trial state judges or trial federal judges before the courts of first instance. Each trial court usually has one presiding judge and one auxiliary judge, and both have powers to rule over a patent case depending on the local court rules. 

Due to the fact that judges, as a rule, tend to not have a technical background or IP expertise, court-appointed experts are required to provide an impartial and precise technical report. The technical report is evaluated by the trial judge, who can agree with it or not. The decisions issued by the trial judges may be challenged before state or federal courts of appeals and the superior courts, including the Supreme Court.

At the Court of Appeals, the panels are comprised by at least three appellate judges who render a single opinion.

The parties shall have no influence on trial judges, state and federal courts or the superior courts. The Brazilian Civil Procedure Code provides that if the party has any personal connection with the judge, the judge must be replaced.

Regarding the nomination of judges in Brazil, it is important to note that judges at the trial level are individuals who have been approved in a public examination and can develop in their career to become appellate judges. 20% of the appellate judges shall be chosen from a three-name list formed by attorneys-at-law and public prosecutors. The President of the Republic is responsible for choosing the Justices of the Superior Court of Justice (from a three-name list provided by the Superior Court itself) and of the Supreme Court (if approved by the Federal Senate). Justices are not required to be career judges.

5.3 Settling the Case

The parties may reach an agreement to settle the case at any time during the lawsuit. The negotiations can be conducted before the courts or between the parties directly. Furthermore, according to the Brazilian Civil Procedure Code, after the plaintiff files the complaint, and unless the plaintiff expressly states that there is no interest in a possible conciliation, the defendant will be summoned to appear in a preliminary conciliation hearing/conference, when the judge will try to settle the case. Conciliation hearings can be scheduled at any time by the judge ex officio or upon a request by the parties if a settlement agreement is feasible.

5.4 Other Court Proceedings

Both infringement and nullity lawsuits can be heard in parallel. Although it is not automatic or even mandatory, infringement proceedings can be stayed pending resolution of a validity or invalidity lawsuit before the federal court.

A request for a stay can be made by the parties or ordered ex officio by the judge. Such a decision can be challenged by means of an interlocutory appeal to the Court of Appeals. Anti-suit injunctions are not usual in Brazil and foreign anti-suit injunction decisions hardly have an influence on proceedings in Brazil, considering that Brazilian courts tend to be more open to arguments invoking the constitutional right of access to the courts and to obtain an effective legal remedy.

6. Remedies

6.1 remedies for the patentee.

The main remedies available for the patentee in infringement lawsuits are search and seizure orders, restraining orders and other kinds of injunctions, plus damages. In Brazil, judges can only order remedies based upon the request of the interested party. The remedies are usually enforced through sanctions, particularly fines, against non-compliant defendants.

Periodic deposits by the defendant to a bank account managed by the courts can be ordered as a form of provisional damages to assure that the execution of final damages will be successful when the litigation is over. The defendant can also be required to post a bond, which shall be updated on a regular basis.

6.2 Rights of Prevailing Defendants

The prevailing defendant is usually entitled to have court fees and other expenses incurred during the case reimbursed, including the court-appointed expert’s fees.

6.3 Types of Remedies

All remedies admissible by law are available for all kinds of intellectual property rights, regardless of type.

6.4 Injunctions Pending Appeal

If a patent is found valid and infringed at first instance, as a rule the injunction granted is immediately enforceable and the appeal by the infringer does not automatically stay the injunction granted by the first instance.

However, staying effects can be requested from the appellate court so that the injunction will be enforced only after the appeal is tried.

7.1 Special Provisions for Intellectual Property Proceedings

There are no special provisions concerning the appellate procedure for intellectual property right proceedings. All appeals follow the same path and procedure provided by the Civil Procedure Code.

7.2 Type of Review

The appeal implies a full review of the facts of the case.

8.1 Costs Before Filing a Lawsuit

In Brazil, lawsuits are usually preceded by warning letters. A party may also take various steps to build a strong case, such as hiring an independent expert, commissioning a technical report confirming the validity of the patent and the infringement perpetrated by the opposite party or obtaining an infringement report by a court-appointed expert within an early production of evidence procedure. All these costs are paid by the interested party and are not recovered in a lawsuit, with the exception of the ones related to the early production of evidence procedure, which can be reimbursed in a regular infringement lawsuit (if the plaintiff is the winning party).

8.2 Calculation of Court Fees

Costs are calculated by each court, taking into consideration procedural expenses and other mandatory fees, which also vary by type of action (eg, a nullity lawsuit or an infringement lawsuit). Court fees, even though they might be different in each state, are usually low, and seldom exceed USD2,000. Fees for the court-appointed expert are usually around USD25,000.

8.3 Responsibility for Paying the Costs of Litigation

Regarding court fees and expenses for patent litigation in Brazil, the losing party is responsible for reimbursing the winner for all the disbursed expenses incurred in the course of the lawsuit by the winning party, as well as for paying an additional amount as attorneys’ fees for the attorneys of the winning party. In the case of a mixed result (ie, if both parties win in different and equally relevant aspects of the dispute), such litigation costs (with the exception of the attorneys’ fees) shall be divided between them. If the losing party wins in a less relevant aspect, it shall still be responsible for all the court fees and expenses.

In Brazil, contractual attorneys’ fees are not reimbursed by the losing party.

If the plaintiff is a foreign plaintiff, they may be ordered to post a bond in Brazilian currency before the court to secure the payment of judicial expenses. This bond is usually set in the amount of 20% of the value given to the lawsuit. However, if the plaintiff is successful, this bond is returned and duly adjusted according to the official inflation rates in Brazil.

According to item I, paragraph 1, Article 83 of the Brazilian Civil Procedure Code, the bond shall not be required when there is a waiver provided by any agreement or international treaty to which Brazil is signatory.

9. Alternative Dispute Resolution

9.1 type of actions for intellectual property.

Alternative dispute resolution (ADR) is not commonly used to settle patent cases or even intellectual property cases.

Mediation is only now slowly starting to become more popular in several areas of law in Brazil. Since Brazilian law is based on civil law, legal professionals have lacked a statutory basis for mediation, despite the obvious fact that mediation may be solely based on contract law. A Mediation Act was passed as Law No 13,140 of 26 June 2015. Nevertheless, in practical terms, mediation is still not being used to solve patent disputes.

Arbitration is also not commonly used in patent disputes, despite the significant adoption of arbitration in other areas of law in Brazil. Brazil’s Arbitration Act was enacted through Law No 9,307 of 23 September 1996, and the past two decades have seen a significant increase in the use of mediation in Brazil.

The Brazilian Civil Procedure Code establishes a mandatory conciliation pre-dispute phase before the defendant has even presented their defence.

Domain Name Disputes

ADR is commonly used for domain name disputes, as Brazil has an administrative domain name resolution system (commonly known by its acronym in Portuguese, SACI) that is based on ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP) but incorporates several other causes for action, and a complaint under SACI may be based not only on trade mark rights (as is the case with the UDRP), but also on other intellectual property rights.

As for the use of ADR in litigation, one must differentiate between invalidity and infringement lawsuits. Invalidity lawsuits must be filed before the federal courts, where ADR is not allowed because the BRPTO understands that only a court of law may decide on the validity of rights. Infringement lawsuits must be filed before the state courts and are disputes between private parties that may be negotiated freely.

10. Assignment and Licensing

10.1 requirements or restrictions for assignment of intellectual property rights.

According to Articles 58–60 of the LPI, a patent application or a patent may be assigned in whole or in part.

Regarding patents, the BRPTO will make the following recordals (entries to the patents database):

• assignment, mentioning the complete qualification of the assignee;
• any limitation or onus applied to the application or patent; and
• changes of name, headquarters or address of the applicant or patentee.

The recordals will produce effects regarding third parties as from the date of their publication in the Official Gazette.

It is important to note that the assignment between a foreign company and a Brazilian company, when onerous, must be recorded by the BRPTO to obtain the corresponding certificate, otherwise the Central Bank of Brazil will not authorise the payment of royalties of remittances abroad.

For assignment recordals, the following documents are required by the BRPTO.

• A transfer petition, completed with the data of the assignee.
• Proof of payment of the governmental fee.
• The assignment document, which should contain:
• the complete qualification of the assignor and the assignee;
• the powers of representation of the signatories of the assignment document and their signatures (the representatives’ signatures need to be notarised by the Notary Public and the signature of the Notary Public then needs to be legalised by apostille or by the Brazilian Consulate); and
• the application number or the number of the patent and the date on which the assignment document was signed.
• The Power of Attorney of the assignee.
• A sworn translation into Portuguese of documents that were created in a foreign language.

10.2 Procedure for Assigning an Intellectual Property Right

Once the BRPTO has reviewed the relevant documents in accordance with the requirements discussed in 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights , providing that they are all in order, the notice of assignment is published on the Official Gazette and the certificate of assignment is then issued.

10.3 Requirements or Restrictions to License an Intellectual Property Right

Licence Recordal

It is important to mention that in Brazil a patent owner or applicant may execute an exclusive or non-exclusive licensing contract for exploitation with a third party. To be enforceable against third parties the licence agreement must be recorded at the BRPTO.

The recordal of a patent licence agreement by the BRPTO is mandatory for the following purposes:

• to obtain presumption of knowledge of the contract by third parties (Article 62, LPI);
• to authorise, when the agreement expressly allows it, the licensee to act by themselves before Brazilian courts in defence of the licensed patent; and
• to allow royalty payments to be deductible for withholding income tax purposes.

As of 1 January 2023, as a result of the liberalisation of foreign exchange controls in Brazil (a part of the country’s effort to be accepted as a full member of the OECD), the recordal of the licence agreement with the BRPTO is no longer required for the remittance of royalties abroad to be allowed.

Note that, in general, freedom to contract prevails, but the BRPTO may provide some limitations as follows.

• The BRPTO only authorises the tax-deductibility of royalty payments for a granted patent, not for pending applications.
• There are limits for the tax deductions of the remittance of payments among companies that have a controlling shareholder relationship; in that case, besides taking into consideration the usual rates of the market, the deductibility ceilings established by Ordinance of Treasury Ministry 436/1958 (between 1% and 5% of the net sales made by the licencee) should be observed.
• Usually, a patent licence agreement will be in force in accordance with the periods of validity of the licensed patents (20 years as from the filing date of the patent application).

Regarding improvements, the LPI determines that an improvement made to a licensed patent shall belong to the party who made it and the other contracting party shall be afforded a preferential right to acquire a licence.

Documentation Requirements

For the licence recordal, the licence agreement notarised and legalised (by apostille or with the Brazilian Consulate) must be submitted to the BRPTO, along with other forms. The licence agreement must comply with some bureaucratic requirements as well.

Compulsory Licensing

Finally, it is important to mention that patents may be subject to compulsory licences. Article 68 of the LPI determines that the patent owner shall be subject to compulsory licensing of their patent if they exercise their rights in the patent in an abusive manner, or if they use it to abuse economic power according to the law in force, under the terms of an administrative or judicial decision.

The following may also be grounds for a compulsory licensing request.

• Failure to exploit the subject matter of the patent within Brazilian territory or failure to manufacture or complete manufacturing of the product, or failure to fully use a patented process, except in case of economic non-viability, in which case imports shall be admitted.
• Commercialisation that does not satisfy market demand.

This compulsory licence may be requested only by a party possessing a legitimate interest and having the technical and economic ability to effectively use the subject matter of the patent predominantly for the purposes of the internal market, in which case the exception above, to do with economic non-viability, shall not apply.

10.4 Procedure for Licensing an Intellectual Property Right

After execution by the parties and two witnesses, the notarised and legalised or appostilled licensed agreement must be submitted to the BRPTO for recordal purposes. Such office conducts a review of the agreement terms and, upon acceptance, issues a certificate of recordal to the licensee, enabling the licensee to pay royalties (if this is the case). Subsequently, a very short extract with basic information about the contract is published in the BRPTO’s Official Gazette but the contract itself remains confidential and, as a general rule, the BRPTO does not furnish copies to third parties.

Kasznar Leonardos

Teófilo Otoni St 63/ 5-7th floor Rio de Janeiro Brazil 20090-080

+55 21 2113 1919

This chapter aims to provide a broad overview of the trends and developments in patent litigation in Brazil. The contents of this guide reflect some of the most recent and pressing matters in Brazil’s ever-developing patent law.

Recent developments are bolstering Brazil’s leading role as a commercial pathway into South America, especially considering the upcoming association agreement between Mercosur and the European Union (EU). In this sense, patent owners looking to operate (or license operations) in Brazil should be well aware of the main developments in the country’s patent protection system. It is our hope that this chapter will assist stakeholders in achieving such goals.

Preliminary Remarks: The Role of Precedent in Brazil

Unlike common law systems like the UK and US, Brazilian law, rooted in the Romanic-Germanic “Civil Law” tradition, tends to attribute less weight to precedent. Judges have wide discretion to reach their own legal conclusions, with case law acting primarily as persuasion, not binding authority.

This general rule is, however, not universal, as not all case law is made equal. Article 927 of the Brazilian Code of Civil Procedure ( Código de Processo Civil – CPC) distinguishes binding precedents from those which are merely persuasive. To this effect, it is possible to state that, while Brazilian court precedents are often informative and useful in supporting the construction of the judge’s rationale, prior rulings are seldom binding.

Patent Term Adjustment (PTA) in Brazil

Since 2021, when the Federal Supreme Court ( Supremo Tribunal Federal – STF) declared unconstitutional the provision allowing patents to remain in force for, at minimum, ten years from their granting, Brazil has experienced a wave of lawsuits requesting patent term adjustment (PTA), based on the Brazilian Patent and Trademark Office (BRPTO)’s examination delays. While 2024 may bring further news, a trend is settled: Despite a successful early phase, with multiple preliminary injunctions granted to keep expired patents in force, the PTA lost steam after some important decisions.

The initial favourable scenario significantly shifted on 9 May 2022, with Justice Dias Toffoli revoking a preliminary injunction on Alektos’ patent on EMS’ Constitutional Complaint, stating that PTA would require clear parameters and defined deadlines, which could only come from specific legislation on the matter. His position was further solidified after being held by the majority on a different constitutional complaint by Bristol-Myers Squibb. Even Justice Luiz Fux, who was, at first, favourable to the case-by-case solution, changed his mind by the start of 2023 influenced by the First Panel’s majority opinion against an unregulated PTA mechanism.

So far, no PTA lawsuit has succeeded in Brazil. The first appellate court ruling on 12 April 2023, rejected Novo Nordisk’s claim. This negative trend seems to extend to preliminary injunctions, with Simponi’s patent’s extension revoked on 17 November 2023.

While PTA plaintiffs face a rocky road, hope remains for overcoming BRPTO delays. Beyond legal arguments and case-specific victories, new legislation offers a potential way forward. Bills proposing a PTA solution are winding their way through Congress, promising a brighter future for patent protection in Brazil.

Skinny Labelling and Second Medical Use

Until recently, carving out patented indications from generic drug labels was illegal in Brazil. Generic manufacturers had to mirror the brand-name drug’s label in its entirety, including all approved indications. However, in late 2023, ANVISA, the Brazilian regulatory agency, amended its 2009 labelling rule, allowing generics to omit patented indications.

The adoption of skinny labelling in Brazil is expected to lead to an increase in patent litigation, as brand-name drug manufacturers may seek to prevent generic manufacturers from illegally circumventing patent rights. Decisions on whether removing patented indications from labels constitutes infringement will be made on a case-by-case basis. Drawing on precedents from other jurisdictions, it’s likely that Brazilian courts will consider the alleged infringer’s conduct, including efforts to induce off-label use of products for still-patented indications, even if such uses aren’t expressly listed on the label.

While still in progress, the validity and infringement cases involving Boehringer and Sun provided us with relevant examples of the Brazilian debate around second use and skinny label. 

Sun’s nintedanib generic and similar products were required by law to adopt on their labels the same therapeutical indications of the Boehringer’s brand-name Ofev. The brand-name drug’s first patented indication was for the treatment of excessive or abnormal cell proliferation, and had its patent expired on 9 October 2020. However, Ofev is also used for treatment of idiopathic pulmonary fibrosis. Such new use was under the BRPTO’s examination for patent protection in a new application submitted by Boehringer. Sun’s products were acquired in governmental purchases for this exact indication, which was not protected by patent before 2023.

Despite Sun’s attempt to prevent this conflict by submitting statements opposing the granting of Boehringer’s patent during the BRPTO’s administrative examination, on 13 June 2023, the second use patent was granted to Boehringer. This event gave rise to three lawsuits filed on that same day.

Sun v BRPTO and Boehringer (Federal Court of Rio de Janeiro)

After failing to prevent the grant for nintedanib second use patent for idiopathic pulmonary fibrosis treatment during BRPTO’s administrative proceedings, Sun filed a lawsuit to judicially achieve an invalidity declaration. The case has yet to reach a ruling on the merits, however the decision on the preliminary injunction request was enough to enable ample discussion.

While the preliminary request to stay the effects of Boehringer’s patent was rejected, the trial judge required the BRPTO to publish an amendment stating that the patent’s effects did not prevent the manufacturing and commercialisation of generic and similar products containing nintedanib for non-protected uses. Such novel decision was held due to concerns around public health and free competition.

Boehringer appealed this decision, arguing that it was misguided and that it fell outside the jurisdiction of the Federal Courts to allow Sun to continue the exploitation of the alleged infringing products. Nevertheless, after failing to obtain a preliminary injunction, Boehringer requested for the appeal to be withdrawn.

Boehringer v Sun (State Court of Rio de Janeiro)

In State Courts, the parties also contest whether the commercialisation of Sun’s generic and similar products infringe Boehringer’s nintedanib second use patents. However, concerns regarding the possibility of conflicting decisions were quickly brought to the Superior Court of Justice ( Superior Tribunal de Justiça – STJ), as not only the infringement and non-infringement cases were filed almost simultaneously, but the Federal Court’s preliminary injunction raised questions concerning jurisdiction.

While Sun was able to stay the infringement analysis until a decision on the merits on Boehringer’s patent validity, the preliminary injunction was subsequently vacated by Justice João Otávio de Noronha, as patent protection should be presumed valid until a decision to the contrary. However, Justice Noronha highlighted that further infringement analysis should be restricted to the protection scope previously provided by the Federal Court (ie, the specific patented use).

Despite such restriction, the Trial Court’s decision on the merits declared that Sun’s products infringed Boehringer’s patents, irrespective of the specific use. Nevertheless, such order was short lived, as Sun was able to secure a preliminary injunction on appeal to partially overturn the decision to allow the manufacturing of nintendanib generic and similar products and its commercialisation for non-restricted uses.

While the appeal in this second-use patent case may shed light on litigation involving skinny labelling issues in 2024, the full picture likely awaits both the final decision and its subsequent application in other cases.

SEP Litigation

Patent practitioners worldwide have been wising up to the fact that the Brazilian judiciary is cultivating a reputation as a plaintiff-friendly venue for SEP litigation. This statement rings especially true for the State Court of Rio de Janeiro, where all Brazilian SEP infringement lawsuits were filed to date.

Rio de Janeiro’s trial courts are knowingly open to granting preliminary injunctions enjoining defendants from the use of patented technology. While attaining a preliminary injunction in Brazil is still far from a given, odds are certainly more favourable to the titleholder when compared to other jurisdictions.

Considering that SEP disputes are often global, the willingness of Brazilian courts to grant preliminary relief also serves as a means of allowing patent owners to attain leverage over implementers in licensing negotiations. This is particularly relevant in the SEP context, as Brazil has the world’s fifth-largest digital population – data that shows the relevance of the Brazilian market to SEP-reliant businesses, especially the telecom industry.

In this connection, 2023 saw the referred pattern be maintained through the grant of a preliminary injunction in the “Brazilian chapter” of the global Nokia v Oppo litigation campaign.

Nokia v OPPO (State Court of Rio de Janeiro)

In this case, unlike other Nokia v OPPO disputes elsewhere, the discussed standard is the Adaptive Multi-Rate Wideband (AMR-WB) codec, patented by Nokia (plaintiff) and Voiceage. In February 2023, Nokia filed suit asserting its patent for a “voice-processing device, and method to process digitally codified voice” against infringement allegedly conducted by OPPO (defendant) through use of patented subject matter at least in the “Reno7”, “A77”, and “A57” smartphones.

The initial complaint brought a request for preliminary injunction to enjoin the defendant from infringing the plaintiff’s patent, especially selling and offering for sale the accused products in Brazil. On the very next day, the Honourable Judge Alexandre de Carvalho Mesquita, of the 1st Trial Court of Business Law for the State of Rio de Janeiro issued a decision granting the preliminary relief.

With this said, it is important to acquaint oneself with the requirements for preliminary relief under Brazilian Law. The CPC establishes three conditions for such:

• there is danger for the plaintiff if the relief sought is delayed;
• there is a likelihood that the plaintiff’s claims will succeed; and
• the effects of the relief sought must not be irreversible for the defendant.

Although brief, the magistrate’s decision is emphatic in affirming four points which were heavily considered when granting the preliminary injunction sought by Nokia:

• by not granting the injunction, the defendant would continue to use a technology freely while other players have costs maintaining their licences;
• a patent is a time-sensitive asset, and every day in which an injunction is not issued, the patent term elapses, and the titleholder remains unassisted by the court system;
• the telecoms market is especially susceptible to rapid changes in technology, which negatively affects the value of telecoms patents, and accentuates the need to provide rapid relief; and
• the issue may not be settled later through payment of damages, as the enforcement of the patent owner’s exclusionary right is necessary for their economic activity.

This decision was affirmed four months later by the State Court of Appeals for the State of Rio de Janeiro.

This precedent, now ratified by the appellate court, provides further encouragement to patent plaintiffs when considering Brazil as a prospective venue for infringement litigation, especially SEP owners and holders of patents in the field of telecom. Oppo may still further appeal to the STJ.

Other Procedural and Substantial Matters in Patent Litigation

Contributory infringement

In the Brazilian Industrial Property Statute (Law No 9,279/96, Lei de Propriedade Industrial – LPI), an inventor is assured the right to enjoin third parties from contributing towards acts of infringement (ie, engaging in contributory infringement).

Unlike what occurs in the US and other jurisdictions, contributory 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 contributory infringement. Hence, plaintiffs arguing for contributory infringement often borrow the provisions contained in the United States Code (35 USC § 271(f)) to demonstrate the occurrence of infringement.

In this connection, a recent case tried by the State Court of São Paulo (Gilead v Blanver) provided perspective into the extent of contributory infringement in Brazilian practice, specifically what pertains to such indirect infringement in the pharmaceutical landscape.

Gilead v Blanver (State Court of São Paulo)

Gilead (plaintiff) filed suit against Blanver (defendant) alleging that the defendant’s conduct of commercialising medicines made with the active ingredient “sofosbuvir” contributed to the infringement of the plaintiff’s patents. The reason for such is that although sofosbuvir itself is not covered by Gilead’s Brazilian patents, after ingestion, sofosbuvir induces the body to metabolise a substance which is, indeed, covered by one of the plaintiff’s patents – a fact undisputed by Blanver.

Thus, Gilead’s position for contributory infringement relied on the fact that consumers, when ingesting the sofosbuvir-based medicines, would produce the patented substance in their own livers. The plaintiff alleged that the defendants were contributing to an act of infringement perpetrated by the consumers, as Blanver:

• provided a specific component (ie, sofosbuvir-based medicine) effectively necessary to induce consumers to produce the patented substance in their own bodies;
• was aware that the product commercialised would induce these effects on consumers; and
• did not provide general-use supplies, but rather a component whose utility is specifically linked to the infringement.

Nevertheless, the judge of the 1st State Trial Court of Business Law of São Paulo was not moved by Plaintiff’s arguments. The Honourable Judge André Tudisco based his reasoning in two main stances: (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.

To the first point, the magistrate stated that the patent may not cover a substance produced “in vivo”. To allow this interpretation would frustrate the requirement of “industrial application” for patents, as the product would not be produced in industry, but rather within the bodies of individual consumers. The judge did concede that synthetic versions of the protected substance would be covered by the patent, but not if it was to be produced from the metabolic process.

The second point brought by the magistrate pertains to the social goals of the patent system. Specifically, the protection of substances produced “in vivo” would make unlawful the production of a pharmaceutical not directly covered by patent rights while, at the same time, attributing an act of direct infringement to consumers who ingest the sofosbuvir-based medicine to treat their conditions. Hence, to Judge Tudisco, providing an ample breadth of coverage for Gilead’s patent would frustrate social interest and constitutional goals.

This decision, by the Trial Court, was appealed and is awaiting judgment by the 1st Reserved Chamber of Business Law of the State Court of Appeals for the State of São Paulo.

Invalidity defence before State Courts

Patent practitioners are well aware that a claim for infringement is often accompanied by a counterclaim for patent nullity.

The Brazilian legal system provides a bifurcated pathway for plaintiffs in patent cases: while infringement plaintiffs must seek their claims under the general jurisdiction of State Courts, nullity plaintiffs must file suit before a Federal Court and appoint the BRPTO as a co-defendant. Nevertheless, the LPI also allows for patent nullity to be argued at any time as a means of defence. This caveat led to a controversy: can State Courts decide (even inter partes) about the nullity of a patent in the context of an ongoing infringement proceeding (ie, an “incidental” nullity claim)?

The STJ’s Third Panel, under Justice Paulo de Tarso Sanseverino, has previously ruled to affirm the possibility of incidentally declaring the nullity of a patent in an infringement proceeding, in accordance with the LPI. Nevertheless, the recent case Bravo & Bravo v Antônio Freitas, currently under examination by the STJ, is expected to establish a clearer rule for lower courts to apply.

Bravo & Bravo v Antônio Freitas (Superior Court of Justice)

This is, at the outset, a case in which the plaintiff (Antônio Freitas) seeks injunctive relief and compensation for damages derived from the defendant’s (Bravo & Bravo) use of an industrial design (ie, a design patent) held by Mr Antônio. After the Trial Court entered judgment in favour of the plaintiff and the Court of Appeals for the State of Rio Grande do Sul affirmed the lower court’s decision, the matter was further appealed to the STJ on the grounds that none of the State Courts’ judgments (both at the trial and appellate levels) had considered the incidental claim of nullity.

Bravo & Bravo’s special appeal was, at first, dismissed by the original rapporteur, Justice Marco Buzzi, on procedural grounds. Furthermore, Justice Buzzi claimed that the case law of the STJ had already decided that nullity claims must be sought before the Federal Court system.

This unfavourable result led Bravo & Bravo to make use of a motion for divergence, a specific procedure meant to uniformise diverging case law within different panels of a Superior Court. After filing, a new rapporteur was appointed (Justice Nancy Andrighi) and the motion was allowed. A first judgment session was held on December 13th and Justice Nancy Andrighi stated her intention to accept the merits of the motion, thus explicitly allowing incidental nullity claims before State Courts. Conversely, Justice Marco Buzzi (the original rapporteur) formally requested more time to examine the dockets of the case and come to a decision. The judgment was adjourned.

While a judgment has not yet been issued, the rationale expressed in Justice Nancy Andrighi’s vote gives way to a preliminary expectation that the formulation of incidental patent nullity claims before State Courts will be allowed, resolving the issue, and providing a clear rule for lower courts to follow.

Stay of infringement proceedings upon the filing of nullity claims

A different procedural matter quite common in patent litigation involves the stay of infringement proceedings until a resolution is attained to the nullity claims. In Brazil, the industrial property statute does not provide specific instructions for such cases, and so these situations are regulated by the general legislation on civil procedure.

In this connection, the CPC calls for the stay of proceedings when another parallel lawsuit has “priority” over the subject matter. Article 313, (V), (a), of the CPC determines that: “Proceedings shall be stayed: […] V – when a judgment on the merits:  a) depends on the trial of another action or on the declaration of the existence or inexistence of a legal relationship that constitutes the main subject matter of another pending lawsuit”.

It is worth noting that the granting of a patent is an official act performed by a government agency (ie, the BRPTO) and, as broadly recognised by Brazilian legal scholars, the acts performed by the administration and its agencies are presumed legitimate and valid until proven otherwise.

From the context, there are two possibilities for infringement lawsuits once a nullity claim is filed. Judges may either choose to stay the infringement and wait for a decision to be made in a Federal Court or choose to move forward with the infringement proceedings as a means of preserving the presumption of validity of the administrative act (ie, the patent grant).

While there is still no binding precedent in this regard, the STJ has recently judged a special appeal (PMW v QT Equipamentos) in which this issue was broadly discussed.

PMW v QT Equipamentos (Superior Court of Justice)

The original case refers to an infringement lawsuit brought by QT Equipamentos (plaintiff/appellee) against PMW (defendant/appellant) relating to a utility model patent. In this case, three years after the infringement lawsuit was filed, a separate nullity proceeding was brought by the defendant before a Federal Court. Thus, the main issue submitted to the STJ’s Third Panel relates to whether the lower courts erred in denying halting patent infringement proceedings after the patent nullity lawsuit was filed before a Federal Court.

The rapporteur for this case, Justice Nancy Andrighi, denied PMW’s appeal on the grounds that the presumption of legitimacy of the BRPTO’s act should prevail. The justice also alluded to the fact that, by allowing an “automatic halt” of infringement proceedings solely based on a nullity filing by a defendant, the pace of the infringement proceedings would be placed at the mercy of a defendant – a party that may have reason to postpone the judgment of the infringement lawsuit as much as possible. Justice Ricardo Villas Bôas Cueva joined this vote.

The dissent, initiated by Justice Marco Aurélio Bellizze, held the majority at the end. Justice Bellizze’s rationale upholds the principle of “priority” brought by the procedural legislation, as a possible future judgment in favour of patent nullity may render the infringement question moot. The dissent gained traction in the Third Panel of the STJ, securing a three-to-two vote for its position.

Although this matter will be submitted to a new judgment by the Special Court of the STJ (in the judgment of motion for divergence in the special appeal No 1.558.149-SP), the stances taken in the PMW v QT Equipamentos case seem to gesture towards a near-stalemate on this issue, with a slight advantage towards the necessity of halting infringement to await the result of the nullity proceedings.

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An International Guide to Patent Case Management for Judges

3.5 patent infringement.

Patent infringement actions are governed by the CPC and are a common proceeding.

3.5.1 Infringement analysis

Patent infringement is analyzed by considering the scope of the claims, as established in the provisions of Article 41 of the LPI:

as a general basic rule for determining an infringement, one must verify whether the accused product or process has all the characteristics of a patent’s independent claims – or of one of them. This is because, strictly speaking, an independent claim is one that defines all the essential characteristics of the invention claimed; dependent claims define only optional characteristics of the invention. Although they do not limit the scope of the patent, dependent claims can be helpful in interpreting the terms of the independent claims to which they are subordinated. This is because dependent claims detail terms more clearly, whereas independent claims define them more broadly. Dependent claims may also help detect an infringement, i.e., after a product or process has been found to infringe any of the broad terms of an independent claim, one can verify whether the infringement also extends to the more specific terms of dependent claims. In such situations, infringements become more apparent. 54

Infringement of a claim may occur directly (or literally) or by equivalence. Direct or literal infringement occurs when

each element of the infringing product coincides with the definition contained in the claim. […] In the direct infringement, the meaning or scope of a particular expression in the claim may need to be interpreted […]; however, once the expression has been interpreted and its extension has been established, correspondence with the element of the infringing product is immediate. 55

By contrast, an infringement by equivalence “is a form of non-literal infringement; it occurs when the element of the infringing product does not fall directly under the definition of the element claimed, but it constitutes a technical equivalent of the latter.” 56

Regarding the infringement of a utility model patent, attempts to expand the scope of a claim beyond its literal meaning should be used carefully in addition to investigating the state of the art, 57 because the protection of a claim is defined by the preamble and the characterizing part.

3.5.1.1 Direct patent infringement

The patent holder has more than just the right to own the patent (Article 6 of the LPI); they also have the right to prevent third parties, with or without consent, from producing, using, putting up for sale, selling or importing for these purposes a product subject to patent or a process or product obtained directly through a patented process (Article 42 of the LPI). Thus, legal protection encompasses both the product subject to the patent (Article 42(I) of the LPI) and the “process or product obtained directly through a patented process” (Article 42(II) of the LPI). It also protects both from others selling, buying, manufacturing, using, putting up for sale or importing a product and from others engaging in a process arising “directly” from a patented process. 58 The expression “directly” may be interpreted in different ways. This divergence should be assessed by considering the possibility of the patent holder obtaining the appropriate compensation for the exploitation, examining whether undue economic exploitation by a third party has occurred and whether the solution is consistent with the purpose of ensuring legal protection. 59 The misuse of patents constitutes a civil wrong liable to compensation.

Thus, Brazilian law gives a patent holder the power to prevent third parties from engaging in acts that infringe the right of ownership. Such power exists even if such acts have occurred independently, unless they fall under the cases of Articles 43 and 45 of the LPI, in which case they would be in accordance with Article 28(1) of the TRIPS Agreement. 60 So, any of these activities listed in Article 42, when unauthorized, constitutes a direct infringement of the right of the patent holder. Thus, Brazilian law gives a patent holder the power to prevent third parties from engaging in acts that infringe the right of ownership. Such power exists even if such acts have occurred independently, unless they fall under the cases of Articles 43 and 45 of the LPI, in which case they would be in accordance with Article 28(1) of the TRIPS Agreement. 61 So, any of these activities listed in Article 42, when unauthorized, constitutes a direct infringement of the right of the patent holder.

The criminal aspect of patent infringement is somewhat distinct and is defined by Article 184 of the LPI:

It is a crime against the patented invention or utility model to: I – export, sell, expose or put up for sale, stock, conceal, or receive, for economic purposes, a product whose manufacturing infringes a patent for invention or utility model, or a product obtained through a patented process; or II – import a product protected by an invention patent or utility model patent, or a product obtained through a process patented in the country, for the purposes set out in the item above, and that has not been placed on the foreign market directly by the patent holder or with their consent.

Article 42(2) of the LPI clarifies that a process patent, referred to in Article 42(II), is infringed when the processor fails to prove that their product was obtained by a manufacturing process other than that protected by the patent. This rule reverses the burden of proof, placing it on the infringer.

Direct or literal infringement occurs when each element of the infringing product coincides with the definitions contained in the claim. 62 In literal infringement, the meaning or scope of an expression in the claim may need to be interpreted; however, once the expression has been interpreted, and its extension has been established, correspondence with the infringing product is immediate. 63

3.5.1.2 Indirect patent infringement

A patent holder may also prevent third parties from contributing to the practice of such infringing acts by others (Article 42(1) of the LPI).

The description of the criminal offense, contained in Article 185 of the LPI, is somewhat more limited: “To provide a component of a patented product, or material or equipment to carry out a patented process, provided that the final application of such component, material, or equipment necessarily entails the exploitation of the object of the patent. Penalty – imprisonment, from 1 (one) to 3 (three) months, or fine.”

Jurists believe that an extensive interpretation of the wording of Article 42(1) of the LPI could hold accountable anyone who sells common spare parts, which can be used for purposes unrelated to a patented invention. This could unduly favor the patent holder. For this reason, it has been argued that a more balanced interpretation would be that a person allegedly committing the indirect or contributory infringement induces someone else, at least partially, to commit some of the infringements listed in Article 42 of the LPI. 64

3.5.1.3 Infringement by equivalence

Infringement by equivalence occurs when an element of a product does not fall directly under the definition of the element in the patent claim but instead constitutes a technical equivalent of it. 65 Such equivalence may be direct – for the purpose of extending the scope of the terms of a claim – or inverse – for the purpose of restricting the scope of the claim to terms equivalent to those mentioned in the specifications. 66 In this sense, Article 186 of the LPI describes the following: “The crimes mentioned in this Chapter [referring to Articles 183–186 of the LPI] are characterized even if the infringement does not reach all claims of the patent or is restricted to the use of means equivalent to the object of the patent.” Although providing for criminal wrongs, they also indicate civil wrongs.

According to jurists, although there are no positive rules, there are two limiting inferences from the finding that equivalence cannot be extended to an accused product that is within the state of the art, nor can it be extended to allow the patent holder to recover protection that they gave up during the processing of the patent application. 67 Although the LPI does not provide for the application of process history, it is possible to support the possibility of its compliance given the principle that does not allow the venire contra factum proprium (acting in a contradictory manner) that arises from objective good faith.

The LPI does not establish criteria for interpreting claims by equivalence. However, jurists have suggested that claims should be interpreted considering the legal meaning of their terms, the specifications and additional information from the available state of the art, the history of processing, and the general meanings of the words in the claim in the technical field. 68

3.5.1.4 The reverse doctrine of equivalents

The LPI does not expressly provide for the application of reverse equivalence. However, jurists have held that, when a restrictive interpretation is needed to avoid the determination of nullity of a patent, the patent holder may request this restrictive interpretation to obtain partial nullity.

3.5.1.5 Extraterritorial infringement

If an unauthorized third party seeks undue economic advantage over a patented invention, an infringement may be recognized, even if it occurred outside Brazilian territory. 69

In the case of imports for patent exploitation and of imports provided for in Article 68(3) of the LPI, Article 68(4) of the LPI allows third-party imports of a product manufactured according to a process or product patent, as long as it has been placed on the market directly by the holder or with their consent.

3.5.2 Defenses

A third party may claim that they did not violate patent law. However, in this case, when it comes to the infringement of a process patent, the burden of proof is reversed (Article 42(2) of the LPI).

3.5.2.1 Absence of liability

For an accused infringer to avoid being held liable, it is possible to claim the provisions of Articles 43 and 45 of the LPI, which, by express legal definition, stipulate circumstances in which a patent is not infringed. Patent nullity may also be claimed, at any time, as a defense.

Article 43 of the LPI provides for cases in which a patent is not infringed. For example, acts committed privately and without commercial purposes by unauthorized third parties do not infringe a patent as long as they do not harm the patent holder’s economic interests (Article 43(I) of the LPI).

A person who exploited, in good faith, the subject matter of a patent in Brazil before the filing or priority date of a patent application is ensured the right to continue with such exploitation, without burden, as before (Article 45 of the LPI). This right is not ensured to a person who became aware of the patent’s subject matter by the disclosure made pursuant to Article 12 of the LPI, as long as the application has been filed within one year of the disclosure (Article 45(2) of the LPI). The right granted pursuant to this article may be assigned only to the business or company, or a company representative directly related to the exploitation of the patented object, by disposal or lease (Article 45(1) of the LPI).

3.5.2.2 Consent or license

Third parties may claim to have a license authorizing their use of the patent. This would exempt them from liability for alleged infringement.

3.5.2.3 First-sale (exhaustion) doctrine

The principle of the exhaustion of patent rights is provided for in Article 43(IV) of the LPI. Under this provision, a third party may also claim to have a product that has been manufactured according to a process or product patent and that has been placed on the domestic market directly by the patent holder or with their consent. Consent or placement on the market by the patent holder are conditions for the exhaustion of the patent holder’s right. Exhaustion refers to the product sold, not to the patent as a whole. However even if primary exploitation is not carried out by the patent holder, the acts of the secondary exploitation may still constitute an infringement. 70

If there is more than one holder of the patent, it is necessary to check whether any of them had the right to place the product on the market or to grant a license. If so, this right is exhausted in relation to the others. Otherwise, there may be no exhaustion.

For patents relating to living matter, patent law is also not infringed if third parties use, circulate or sell a patented product that has been lawfully introduced into the market by the patent holder or license holder, provided that the patented product is not used to multiply or propagate the living matter for commercial purposes (Article 43(VI) of the LPI). Additionally, patent law is not infringed if third parties use the patented product as an initial source of variation or propagation to obtain other products without commercial purposes. Finally, there is no infringement for acts performed by unauthorized third parties, related to the protected invention and intended exclusively for the production of information, data and test results aimed at obtaining a trade license – in Brazil or in any other country – for the exploitation and sale of the patented product after expiration of the time limits set forth in Article 40 (Article 43(VII) of the LPI).

Article 43(IV) of the LPI provides for exhaustion only for products placed on the domestic market by the patent holder or with their consent. Therefore, holders may exercise their right to prevent the parallel importation if they import their product, even if the product is placed on the foreign market by the patent holder or with their consent. 71

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