In Brazil, invention rights are protected through patents for new technologies and utility models for new shapes or arrangements in practical objects. These rights, along with other IP assets, are guaranteed by the Federal Constitution and governed by the Brazilian Industrial Property Law (Law No 9,279/96 – LPI), in line with 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.

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.

Length of Grant Procedure

It currently takes an average of four and a half years for a patent to be granted by the BRPTO, though the timeline can vary by field. Fast-track options are available, including Patent Prosecution Highway programmes with the USPTO, JPO, and other foreign offices.

Since 2019, the BRPTO has implemented a programme to address the backlog, leading to a reduction in processing times. This includes a special procedure allowing applicants to use patent searches already conducted by foreign offices, which is expected to speed up examination, as over 80% of patent applications in Brazil are filed by foreign applicants with prior assessments abroad.

By 4 January 2024, the backlog had decreased from 149,912 applications in 2016 to 3,573. Of the remaining, 1,960 are from the chemical field, which has the highest number of pending applications.

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.

Fees

The following official fees typically apply (with an exchange rate of approximately USD1 = BRL6).

• USD29 for filing a patent application (invention or utility model).
• USD100 for requesting examination of an invention patent application (up to ten claims).
• USD63 for requesting examination of a utility model patent.

The annuity fees within the ordinary term are as follows.

• For an invention patent:
1. Pending application – approximately USD49.
2. Granted patent – between USD130 and USD334, depending on the patent’s age.

• For a utility model:
1. Pending application – approximately USD33.
2. Granted patent (3rd to 6th year) – between USD68 and USD202, depending on the patent’s age.

Patents are granted for 20 years and utility models for 15 years from the filing date, as per Article 40 of the LPI. The minimum ten-year term from the grant date, previously protecting applicants from BRPTO delays, is no longer applicable following the Supreme Court’s ruling deeming the sole paragraph of Article 40 unconstitutional.

In response to the minimum ten-year term safeguard, several patent owners have filed lawsuits seeking compensation for term loss due to the PTO’s delay. While there is still no binding interpretation given to the patent-term adjustment (PTA) question, recent trial and appellate court decisions have suggested that plaintiffs seeking term adjustments face significant challenges, especially in the absence of explicit provisions regulating the adjustment hypotheses in the Brazilian Patent Statute.

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 that which 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 to immediately halt infringement (Article 209, paragraph 1, LPI). Courts grant such remedies upon evaluating prima facie evidence of infringement and risk of irreparable harm.

Patent owners are not required to provide public information, such as patent listings or use codes, for specific products or processes. However, information may be available for self-declared standard-essential patents (SEPs) in the telecommunications sector, typically through standard-setting or standard-developing organisations (SDOs) like the Brazilian Association for Technical Standards.

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

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).

Under Article 212 of the LPI, BRPTO decisions can be challenged through an administrative appeal. If a patent application is rejected, the applicant can appeal to the BRPTO president within 60 days of the decision’s publication. If unsuccessful, the applicant may challenge the final decision in federal court.

Additionally, any public administration decision, including those by the BRPTO, can be contested in court within five years (Article 1, Decree No 20,910/1932 and Article 54, LPI). A lawsuit can be filed even while the administrative appeal is pending.

Under Article 84 of the LPI, applicants and patent owners must pay annual fees starting from the third year after the filing date. Fees are due within the first three months of each year, with a six-month grace period available upon payment of an additional fee.

Failure to pay the annual fee results in the extinction of the application or patent (Article 86, LPI). The BRPTO must notify the applicant or patent owner in advance.

To remedy this, the application or patent can be restored within three months of the lapse notice by paying a restoration fee (approximately USD71) and any outstanding fees. If not paid, the application is considered invalid.

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.

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 generally ruled on by different jurisdictions. Patent infringement actions, civil or criminal, are within the statutory authority of state courts. Recently, a decision by the Superior Court of Justice expanded the authority of state courts to allow them to hear nullity claims when they are brought by a defendant in response to infringement claims. In such circumstances, the effects of a finding of patent nullity will be limited to the parties-in-suit.

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.

The main remedies available for third parties to remove the effects of intellectual property rights are pre-grant and 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).

Pre-Grant and Post-Grant Review

Interested parties may initiate administrative proceedings before moving to the courts. Such proceedings may take the form of either motions for pre-grant or post-grant review. Post-grant proceedings were already explained previously (see 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights), pre-grant reviews are explained here.

In a nutshell, Article 31 of the LPI allows an interested third party to provide the BRPTO with “subsidies” at any time during the examination of an application. An interesting point of note: The current interpretation of who could be an “interested third party” is very broad, encompassing any member of society.

Usually, such subsidies take the form of prior art that the examiner may have missed. The intervening third party may also provide any arguments they deem important to steer the examination.

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). Recently, the Superior Court of Justice issued a ruling explicitly allowing defendants in infringement suits to raise nullity claims as a means of defence. Hence, there is a founded expectation that this mechanism will be used more often by defendants seeking to strike down patents asserted against them.

Declaration of Non-Infringement

Articles 19 and 20 of the Brazilian Civil Procedure Code allow parties to seek purely declaratory judgments regarding the existence (or non-existence) of legal relations. Hence, interested parties may seek the judiciary to attain a declaratory judgment of non-infringement if they have a legitimate concern that a patent owner will pursue infringement claims against them. Usually, when a party files lawsuit seeking a declaratory judgment of non-infringement, the common response is for the patentee to assert their infringement claims.

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.

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 Courts of São Paulo and Rio de Janeiro are 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 alleged violation of federal statute (eg, the LPI) from the State Courts of Appeals and the Federal Courts of Appeals.

The Supreme Federal Court (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

While not uniform nationwide, many courts handling patent cases employ specialised judges or panels for IP matters.

The Federal Court of Appeals for the 2nd Circuit (TRF2) has two specialised panels, each with four appellate judges overseeing IP cases. At the federal trial level, five courts handle only IP and pension law cases. The Federal Court of Appeals for the 1st Circuit is emerging in IP matters, with four panels of three judges each, though their specialisation extends beyond IP. In Brasilia, the Federal District, two federal trial judges focus specifically on IP cases.

In state courts, the São Paulo State Court of Appeals has a highly skilled IP body, with eight specialised business trial courts (two in central and six in regional areas) and two business appellate courts. The State Court of Appeals of Rio de Janeiro is establishing a specialised IP chamber and has nominated three appellate judges for the role. At the trial level, seven business courts handle IP cases.

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.

In Brazil, patent infringement lawsuits can be filed without prerequisites, such as prior negotiations, under the Civil Procedure Code. However, right-holders often issue warning letters to establish the date the offender was notified, which is crucial for future indemnification claims.

In Brazil, parties in IP cases must be represented by a lawyer and cannot act independently in court. Foreign companies, whether or not headquartered in Brazil, can file lawsuits if represented by a Brazilian attorney. A bond may be required for foreign companies asserting claims (see 8.3 Responsibility for Paying the Costs of Litigation).

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.

Brazilian law does not allow for protective letters to safeguard a potential defendant against requests for interim relief. However, 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.

Under Article 225 of the LPI, lawsuits for damages from industrial property rights violations must be filed within five years, compared to the ten-year limit under the Civil Code. Actions against the BRPTO must also be filed within five years (Article 1, Decree 20,910/32). However, patent nullity lawsuits can be initiated anytime during the patent’s term.

The Brazilian Civil Procedure Code allows for early production of evidence, enabling courts to order the search and seizure of documents and infringing products, obtain technical opinions from court-appointed experts, or hear witnesses. Evidence gathered can be used in future lawsuits if necessary. During infringement cases, a court expert works with technical assistants from both parties to provide an impartial opinion to aid the judge’s decision. Brazil does not have discovery proceedings.

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.

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.

Article 45 of the LPI establishes the “prior user exemption” – ie, that a person who, in good faith, benefited from the patented technology 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 harm the legitimate 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 (ie, national exhaustion).
• 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.
• Acts carried out by unauthorised third parties aimed exclusively at producing information, data, and test results looking to attain regulatory approval (in Brazil or abroad) for commercialisation of a patented product after the expiration of the patent term (ie, the Bolar exemption).

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.

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.

Under Article 42 of the LPI, a patent grants its owner the right to prevent unauthorised manufacturing, use, sale, offering for sale, or importation of a patented process or product, or contribution to such acts. Process patent infringement occurs when a third party uses a patented process without the owner’s consent. In such cases, the burden of proof may be shifted to the accused party, requiring them to demonstrate that their process differs from the patented one (Article 42, LPI; and Article 373, Brazilian Civil Procedure Code).

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

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

• prior use;
• 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.

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.

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.

Third parties may participate as amici curiae in patent lawsuits based on the case’s relevance or broader social impact. Such participation can be requested by either party or the third-party itself, and judges may appoint amici curiae ex officio (Article 138, Brazilian Civil Procedure Code). Amici curiae generally cannot appeal.

Independent experts or consultants can also provide opinions to a party, which can be submitted as documentary evidence without direct involvement in the dispute.

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.

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.

Amendments are possible in revocation or cancellation proceedings, though rare. Under Article 32 of the LPI, amendments can be made by the applicant until the patent examination request, but broadening the scope of claims is not permitted.

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). While the Superior Court of Justice now allows patent nullity to be argued within a single lawsuit, a nullity judgment in this context would only produce inter partes effects, binding only the parties involved.

The LPI includes specific procedural provisions for patent lawsuits. Under Article 56, paragraph 2, a judge may grant an injunction suspending a patent’s effects if procedural requirements are met. This request can be made at any time during litigation and is typically decided quickly due to its urgency. Fact witnesses are rarely required, but expert reports are commonly submitted. The trial judge issues the injunction decision, which can be appealed through an interlocutory appeal to the Court of Appeals.

Article 57 states that annulment lawsuits must be heard by Brazilian federal courts, with the BRPTO and the patent owner as mandatory defendants. The BRPTO can agree with the plaintiff’s claims and request the patent’s invalidation.

Paragraph 1 grants the patent owner a 60-day period (instead of the usual 15 days) to submit a reply to an annulment lawsuit

Article 210 states that damages will be determined in the liquidation phase, based on the plaintiff’s choice of the most beneficial criterion:

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

The plaintiff must choose by the start of the liquidation phase, which typically begins about two years after the final decision on the merits. This phase usually requires an accounting expert to assist the judge in calculating the damages.

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.

As judges typically lack technical or IP expertise, court-appointed experts provide impartial technical reports for the trial judge’s evaluation. These decisions can be challenged in state or federal appellate courts 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.

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.

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.

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.

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

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

If a patent is found valid and infringed at the trial level, infringement plaintiffs generally request the grant of interim relief within the verdict. This allows the injunction granted to be immediately enforceable and the appeal by the infringer would not automatically stay the injunction granted by the first instance.

However, even if interim relief is granted, a stay of the injunction can be requested from the appellate court while the appeal is pending.

The appellate procedure for intellectual property cases follows the standard process outlined in the Civil Procedure Code, with no special provisions.

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

In Brazil, lawsuits are often preceded by warning letters, though this is not mandatory. Parties may strengthen their case by hiring independent experts, commissioning technical reports on patent validity or infringement, or obtaining a court-appointed expert’s infringement report through an early evidence procedure. These costs are borne by the interested party and are typically unrecoverable, except for early evidence procedure costs, which may be reimbursed in a successful infringement lawsuit.

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 usually range from USD10,000 (low complexity cases) to USD65,000 (high complexity cases).

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.

While courts remain the preferred venue for resolving patent cases involving significant legal or financial stakes, ADR methods such as arbitration and mediation are gaining popularity in various areas of law in Brazil, including patents. Many patent agreements and IP contracts now include ADR clauses, reflecting their growing acceptance.

Although Brazilian law follows a civil law system, legal professionals have traditionally lacked a statutory basis for mediation, despite its clear foundation in contract law. This changed with the enactment of the Mediation Act (Law No 13,140) on 26 June 2015. However, mediation is still rarely used for patent disputes in practice.

The Arbitration Act (Law No 9,307), enacted on 23 September 1996, has led to a significant increase in arbitration use over the past two decades, demonstrating a growing shift toward ADR in Brazil.

The Brazilian Code of Civil Procedure prioritises the consensual resolution of disputes and encourages its use at various stages of judicial proceedings. For instance, Article 334 of the Code mandates the holding of a conciliation or mediation hearing before the start of contentious proceedings, unless both parties express a lack of interest. This hearing aims to promote an agreement before the merits of the case are adjudicated.

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.

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 records:

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

The recordings will produce effects towards third parties from the publication date in the official gazette.

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

• A transfer petition, completed with the data of the assignor and assignee.
• Proof of payment of the governmental fee.
• The assignment document, which should contain:
1. the complete qualification of the assignor and the assignee;
2. 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
3. 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 simple translation into Portuguese of documents that were created in a foreign language.

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 in the official gazette and the certificate of assignment is then issued.

Licence Recording

In Brazil, a patent owner or applicant may execute an exclusive or non-exclusive licensing contract for exploitation with a third party.

Although the recording of patent licence agreements before the BRPTO is no longer mandatory, neither to obtain authorisation for remittance abroad of the royalties owed by the local Licensee nor for obtaining the royalty deductibility benefit for corporate income tax purposes (see Federal Law 14,286/2021), the licence agreement must be recorded at the BRPTO to be enforceable against third parties.

Thus, the recording 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); and
• to authorise, when the agreement expressly allows it, the Licensee to sue infringers of the licensed patents at Courts without the IP owner joining as a co-plaintiff.

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.
• 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).

Article 63 of the LPI states that improvements to a licensed patent belong to the party who made them, while granting the other contracting party a preferential right to acquire a licence for the improvement.

Additionally, it is important to note that a new Transfer Pricing Law (Law 14,596/23) became effective in January 2024 in Brazil. It represents a landmark reform aligning Brazil’s transfer pricing rules with OECD guidelines.

Documentation Requirements

A notarised and legalised (via apostille or Brazilian Consulate) licence agreement must be submitted to the BRPTO, along with a power of attorney authorising an IP agent to handle its records. The agreement must also meet certain bureaucratic requirements. If the licence agreement is electronically signed by all parties, notarisation and apostille/legalisation are not required. Witness signatures are only needed if no Brazilian location is specified in the document, and the witnesses can be of any nationality.

Compulsory Licensing

Article 68 of the LPI states that the patent owner may be subject to compulsory licensing if they abuse their patent rights or use the patent to exploit economic power unlawfully, as determined by an administrative or judicial decision in accordance with applicable law.

Grounds for a compulsory licensing request include:

• 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.

After execution by the parties and two witnesses, the notarised and legalised or apostilled licensed agreement or the electronically executed licence agreement must be submitted to the BRPTO for records. BRPTO conducts a review of the agreement terms (except the payment provision, which BRPTO has no powers to revise) and, upon acceptance, issues a certificate of records containing some basic information of the agreement, for instance, the names of the parties, nature of the licence (exclusive or not), the Brazilian patent application and/or registration process numbers under licence, the term of the licence, and the royalties established (if applicable). Subsequently, an extract with basic information about the contract is published in BRPTO’s official gazette but the contract remains confidential and, in general, BRPTO does not furnish copies to third parties. Currently, BRPTO is taking from 60 to 90 days to record a patent licence agreement, provided no official actions are raised during the recording procedure.