3.3 Judicial institutions
3.3.1 Judicial administration structure, decision-makers and procedures
To clarify the functioning of the Brazilian justice system in conflicts involving patents, it is necessary to briefly present the Brazilian judicial procedure, the organization of the judiciary and, finally, the powers attributed to judges and the limits of their performance. With this information, it will be possible to understand the management limits of proceedings involving patent litigation under Brazilian law.
The Brazilian civil procedure is divided into what is known as the “cognizance” phase – in which disputes and controversial issues between the disputing parties are decided by the judge – followed by the “judgment satisfaction” phase – in which sanctions are imposed by the judges if their decisions are not voluntarily satisfied. The cognizance phase ends, as a rule, with the rendering of a final order by the judge, either ending the case without prejudice or deciding on the relief requested by the parties, known as “judgment.”
It is interesting to note that, although Brazil has its own patent law (i.e., the LPI), procedural matters are basically governed by the general civil procedural law (i.e., the CPC). In other words, based on the general procedural rules, judicial practice has adapted the civil procedure to the peculiarities of the issues related to the judicialization of patents in Brazil. The CPC is applied nationally, binding both the federal and state courts.
There are two main rules that guide the assignment of jurisdiction in cases involving patent litigation. Cases that claim patent nullity are heard by the federal courts, with mandatory intervention by the INPI (Article 57 of the LPI and Article 109 of the Constitution). Being a matter of absolute rationae personae jurisdiction, cases involving discussions regarding patent infringement are heard by state courts. Cases related to patent infringements can be filed before any of the trial courts that make up the state courts, which are organized and have their competence distributed according to Article 92 of the Constitution. Any trial court can accept such cases as long as the criteria for the definition of jurisdiction are observed.
With respect to the organization of courts and the judicial districts that make up each of the state courts, the Constitution exclusively grants, to each state’s courts, the authority to propose to the legislative power of the federative entity to which it belongs the creation, organization and distribution of jurisdiction. Therefore, each state court may organize itself differently, including with regard to matters involving patents. The same applies to each of the five regional federal courts with regard to its organization.
What defines the number of courts and their degree of specialization in a certain city or judicial district is the judicial workload. Consequently, jurisdiction is regulated by the resolutions of the state and regional federal courts.
Regardless of whether it is at a federal or state court, all patent litigation goes through first instance jurisdiction – in which the issues are analyzed by a single judge – and through appellate instance jurisdiction (state or regional federal appeal courts) – in which appeals are addressed and tried by a panel of judges. In exceptional circumstances, it is also possible to submit a court of appeal’s decisions for review by the Superior Court of Justice (Superior Tribunal de Justiça; STJ), which analyzes, in summary, allegations of infringement of the federal law, or even by the STF, which is responsible for constitutional issues.
3.3.2 Specialized intellectual property judiciary
The judicial courts, to which the patent cases are assigned, are not specialized in Brazil, except for the courts in the jurisdictions where the patent caseload justifies specialization. This is the case of the State Court of São Paulo (first and appellate instance), and more recently the State Court of Rio Grande do Sul (appellate instance). The Federal Court of the 2nd Region (which is located in the city of Rio de Janeiro and covers the states of Rio de Janeiro and Espírito Santo) is also a specialized intellectual property court at the first instance as well as at the appeal level. Nonspecialized courts may have jurisdiction over other matters (e.g., civil, corporate, childhood and youth, and criminal matters), which is why they are not considered specialized courts.
Specifically, in the case of the São Paulo State Court at first instance, there are, in the judicial district of the state capital, two trial courts specialized in business and arbitration matters, which entertain litigation involving issues related to business law (Book II of the Special Part of the CC), joint-stock corporations (Law No. 6,404, of December 15, 1976),33 industrial property and unfair competition (addressed, in particular, in the LPI), franchising (Law No. 8,955, of December 15, 1994),34 as well as cases arising from the arbitration law (Law No. 9,307, of September 23, 1996).35 Consequently, industrial property issues that comprise patents and trademarks are judged, in the first instance jurisdiction, as business law matters. There are also, in the first instance jurisdiction, additional specialized trial courts in business and arbitration matters encompassing the districts outside the capital city called 1st Judicial Administrative Region for the greater São Paulo metropolitan area, 4th Judicial Administrative Region of Campinas, 6th Judicial Administrative Region of Ribeirao Preto, 7th Judicial Administrative Region of Santos, 8th Administrative Region of Sao Jose do Rio Preto, 9th Judicial Administrative Region of Sao Josè dos Campos, and 10th Judicial Administrative Region of Sorocaba. In addition, the São Paulo State Court has, in its Court of Appeals (appellate jurisdiction), specialized chambers for analyzing issues involving corporate (including intellectual property) and bankruptcy matters, with competencies as in the first instance business trial courts.
At the Federal Court of the 2nd Region, there are, in the instance jurisdiction, four federal trial courts specialized in industrial property, with jurisdiction to prosecute and decide cases filed against the INPI on such matters. These trial courts are located in the city of Rio de Janeiro, where the INPI is headquartered. In the appellate jurisdiction, there are specialized business chambers which adjudicate intellectual property issues, as well as criminal and social security matters.
Thus, in Brazil, the only specialized courts in intellectual property are the first and second instance jurisdiction in the São Paulo State Court, the Rio Grande de Sul Court at second instance, and first and appellate instance jurisdiction in the Regional Federal Court of the 2nd Region (Rio de Janeiro). However, there are no courts, either trial or appeal courts, in the state or regional federal courts with exclusive jurisdiction to address patent issues.
Figure 3.3 shows the judicial administration structure in Brazil.
3.3.3 Relationship between invalidity and infringement proceedings
Regarding the standing to sue to file lawsuits related to patent protection, it is necessary to understand what the main existing actions are – namely:
- action for prohibition;
- action for damages;
- invention patent claim action;
- action for patent nullity;
- action for a writ of mandamus;
- provisional remedies; and
- criminal action, which is usually of the victim’s private initiative.
According to Humberto Theodoro Junior,36 in an action for prohibition, the holder of the industrial property right can discuss the possibility of imposing on a third party a prohibition regarding the holder’s privilege. Such a judgment prohibits the infringer from carrying out the particular act. The standing to sue belongs to the holder of the privilege, and the standing to be sued belongs to the infringer.
Also, according to Humberto Theodoro Junior,37 an action for damages can be filed by a patent holder, their successors or by a total or partial assignee. The standing to be sued belongs to the person who infringes the privilege, including against a partial assignee if the assignment is abused, and also to the assignor of the privilege if, after the assignment, the assignor uses the invention again.
A patent claim action can be filed by the inventor, with standing to sue, if someone usurps the inventor’s invention and patents it in their own name.38
An action for patent nullity can be filed by any person who has a legitimate interest: that is, anyone who is being harmed by the alleged improper patent. In this action, the INPI must appear as the defendant in the action; this is the only action involving patent law that is filed in the federal courts. An action for a writ of mandamus may also be filed in the federal courts: it is a procedural remedy of a constitutional nature, intended to obtain the immediate protection of a liquidated and certain individual right against any abuse or irregularity by the authority.
3.3.4 Judicial education on intellectual property
Judges, unlike the administrative agents who work at the INPI, do not have specific training in the field of intellectual property from the schools of judges – both as they enter the career and throughout it – except for the federal judges who are members of the Regional Federal Appellate Court of the 2nd Region. This court is a pioneer in the propagation of knowledge in the field of intellectual property, and its respective school, the School of Judges of the Regional Federal Court of the 2nd Region (Escola da Magistratura Regional Federal 2ª Região), which has a specific commission in the field of intellectual property,39 because the city of Rio de Janeiro is the home of the INPI’s headquarters and where, consequently, most of the actions for the annulment of patents and registrations granted by the INPI are concentrated.
In this way, to guarantee the scope of specialization, the São Paulo School of Judges (Escola Paulista da Magistratura) is making progress on the dissemination of knowledge in the field – even if, for now, sporadically and nonsystematically – such as through the seminar that was held in June 2021, titled “Contencioso Patentário no Judiciário – Análise e Aprimoramentos” (Patent Litigation in the Judiciary – Analysis and Improvements), and the Intellectual Property Expertise Course held from March to May 2022.
In addition, the importance of training a robust and qualified body of professionals has been identified. These professionals may be chosen by judges in patent disputes as experts to improve the management of cases. Consequently, two important initiatives that could be adopted by Brazilian courts were identified:
- training courses to be constantly offered by schools of judges – some in collaboration with the INPI – for the improvement of experts; and
- the preparation of a list of specialized professionals from which judges could choose during the evidentiary stage of the cases.