3.4 Patent invalidity
The law considers a patent null if it has been granted while violating legal provisions (Article 46 of the LPI). However, some have argued that this provision is too broad and endangers legal certainty because the failure to comply with formal or procedural requirements would also give rise to the nullity of the patent.40 A solution to the issue of generality arose from the Patent Law Treaty,41 a multilateral treaty adopted in Geneva in June 2000. Article 10 of the Patent Law Treaty forbids the invalidation of a patent for noncompliance with formal requirements if there is no fraud.42 Although Brazil is a signatory to the treaty, it has not yet ratified it internally, so the scope of Article 46 of the LPI is still applicable in Brazil.
As per the LPI, a patent can be invalidated either administratively or judicially. Articles 46–49 of the LPI govern the possibility of patent nullity. Given the intense judicialization of procedures in Brazil and the principle of nonnegation of judicial review, it is possible to resort to the judiciary to request the nullity in an action that may be filed by either the INPI or any interested party during the patent term,43 following the provisions of Article 56 of the LPI.44
Additionally, Article 56(1) and 56(2) determine, respectively, that nullity may be argued at any time as a matter of defense and that a judge may, preventively or incidentally, suspend the effects of the patent since the due procedural requirements are attended. According to Ramos, this provision seems to refer, obviously, to the general power of caution of the judge, which requires the presence of periculum in mora (danger of delay) and fumus boni iuris (plausibility).45 In this case, as already mentioned, the lawsuit must be filed before the federal courts. If the relief sought in the lawsuit is granted, the INPI is required to nullify the patent and make the appropriate official records regarding such an annulment46 in accordance with Article 57 of the LPI.47
Given the technical complexity involved in such lawsuits, Article 57(1) establishes a term of 60 days for the defendant to submit an answer. A judge may, throughout this action, choose to provisionally suspend the effects of the patent under the terms provided for in Article 300 of the CPC if this is requested by the plaintiff.48
At the end of the case, when the preliminary and priority issues provided for in Article 485 of the CPC49 have been overcome, “the patent may be declared null, if it has been granted in violation of any of the rules of the [LPI], such as the requirements of novelty and inventive step,” producing ex tunc (retroactive) effects, as shown above, and erga omnes (binding upon everyone) effects, given that this nullity produces effects from the filing of the patent application with the INPI.50
It is important to remember that, while actions for damages are filed before the state courts, patent nullity actions are filed before the federal courts because the INPI is an indispensable party. Something interesting happens when there is an incidental argument in an action for damages for patent infringement regarding a claim for its nullity. Theoretically, nullity can be argued as a defense, according to Article 56(1) of the LPI. However, superior courts have adopted the opinion that, due to the INPI’s personal jurisdiction, the connection between these actions cannot be recognized – only the relationship of external priority between the action for nullity and the action that discusses the infringement, thus suspending the latter, based on Article 313(V)(a) of the CPC.51 The STJ, in Special Appeal (Recurso Especial) No. 1,132,449/PR, recognized that a state court would lack jurisdiction to assess and judge the incidental claim of nullity presented by the defendant for defense in the acts of the infringement action, thus demanding its own action before the federal courts.52
Recently, however, the STJ presented a different opinion, recognizing the feasibility of incidental nullity for patents, which would generate inter partes effects:
although it is not possible to incidentally recognize the nullity of marks, the incidenter tantum examination of the nullity of patents and industrial designs is perfectly possible. This possibility comes from an express determination of law […] as a defense matter in infringement actions, over which the State Courts have jurisdiction. In such cases, INPI’s participation becomes unnecessary.53
Jurists’ opinions diverge on the procedural moment of recognition of external priority. Some have said that priority should be applied after the filing of the proceedings. Others have said that it should be applied only after the judgment on the merits of the priority legal proceedings in which state courts determine that the patent had been infringed because, if no infringement is found, there is no priority. Finally, some have argued that it should be recognized as soon as evidence of priority is presented.