Enforcement through the courts

At trial

What level of expertise can a patent owner expect from the courts?

Most patent-related cases are filed before the courts sitting in Rio de Janeiro, Sao Paulo and Brasilia. Except for certain judges in these jurisdictions, most Brazilian courts have no expertise in patent law.

Are cases decided by one judge, a panel of judges or a jury?

Cases are decided by a single judge at the first-instance trial level and by a panel of appellate court judges at the appellate level. Juries do not decide IP-related disputes in Brazil.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Not applicable. 

What role can and do expert witnesses play in proceedings?

Expert witnesses play a key role in convincing the judge to grant or reject a request for preliminary injunctive relief. Moreover, they work with the unbiased court-appointed expert during the expert examination, addressing questions to him or her and delivering opinions on his or her technical report. 

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

Yes, the Patent Statute provides for patent infringement on an equivalence of means basis. However, it does not set out the criteria for applying the doctrine of equivalents and there is no binding precedent establishing a test or standard for applying the doctrine.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Yes. The legal requirements for obtaining injunctions are fumus boni juris (ie, there is a likelihood of the complaint being decided in favour of the plaintiff) and periculum in mora (ie, immediate measures are needed to cease the infringement and thus prevent the plaintiff from bearing further damages). 

How are issues around infringement and validity treated in your jurisdiction?

Infringement suits must be brought before state courts, while invalidity suits must be brought before federal courts against both the patent owner and the Brazilian Patent and Trademark Office.  

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Attorneys typically quote foreign precedents in support of their arguments, particularly when there is no Brazilian precedent or rule dealing with the issue. However, judges rarely cite foreign cases or rely on them to ground their own decisions.

Damages and remedies

Can the successful party obtain costs from the losing party?

The prevailing party may recover a small part of the attorneys’ fees, in addition to court costs and the fees charged by the court-appointed expert.

What are the typical remedies granted to a successful plaintiff?

A permanent injunction preventing the defendant from using the claimed technology and damages.

How are damages awards calculated? Are punitive damages available?

Damages are calculated based on:

  • the profits obtained by the infringer through the infringement;
  • the losses suffered by the patent owner; or
  • reasonable royalties.

The basis chosen for damages calculation depends on what works best for the plaintiff. There are no statutory punitive damages and such requests are usually rejected pursuant to case law.  

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Courts often grant permanent injunctions whenever the final ruling favours the rights holder. 

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

Most courts take approximately three years to issue a first-instance decision on the merits. The timescale depends on the judge’s schedule and willingness to rule on the case, as well as on how long the court-appointed expert takes to prepare and present his or her technical report.

How much should a litigant plan to pay to take a case through to a first-instance decision?

Costs vary significantly according to the case, but a litigant should expect to spend at least $200,000 from the beginning of the case until a first-instance decision on the merits, including legal fees, court costs and fees charged by the court-appointed expert.

Click here to view the full article.