An International Guide to
Patent Case Management for Judges

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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.