3.5 Patent infringement
Patent infringement actions are governed by the CPC and are a common proceeding.
3.5.1 Infringement analysis
Patent infringement is analyzed by considering the scope of the claims, as established in the provisions of Article 41 of the LPI:
as a general basic rule for determining an infringement, one must verify whether the accused product or process has all the characteristics of a patent’s independent claims – or of one of them. This is because, strictly speaking, an independent claim is one that defines all the essential characteristics of the invention claimed; dependent claims define only optional characteristics of the invention. Although they do not limit the scope of the patent, dependent claims can be helpful in interpreting the terms of the independent claims to which they are subordinated. This is because dependent claims detail terms more clearly, whereas independent claims define them more broadly. Dependent claims may also help detect an infringement, i.e., after a product or process has been found to infringe any of the broad terms of an independent claim, one can verify whether the infringement also extends to the more specific terms of dependent claims. In such situations, infringements become more apparent.54
Infringement of a claim may occur directly (or literally) or by equivalence. Direct or literal infringement occurs when
each element of the infringing product coincides with the definition contained in the claim. […] In the direct infringement, the meaning or scope of a particular expression in the claim may need to be interpreted […]; however, once the expression has been interpreted and its extension has been established, correspondence with the element of the infringing product is immediate.55
By contrast, an infringement by equivalence “is a form of non-literal infringement; it occurs when the element of the infringing product does not fall directly under the definition of the element claimed, but it constitutes a technical equivalent of the latter.”56
Regarding the infringement of a utility model patent, attempts to expand the scope of a claim beyond its literal meaning should be used carefully in addition to investigating the state of the art,57 because the protection of a claim is defined by the preamble and the characterizing part.
3.5.1.1 Direct patent infringement
The patent holder has more than just the right to own the patent (Article 6 of the LPI); they also have the right to prevent third parties, with or without consent, from producing, using, putting up for sale, selling or importing for these purposes a product subject to patent or a process or product obtained directly through a patented process (Article 42 of the LPI). Thus, legal protection encompasses both the product subject to the patent (Article 42(I) of the LPI) and the “process or product obtained directly through a patented process” (Article 42(II) of the LPI). It also protects both from others selling, buying, manufacturing, using, putting up for sale or importing a product and from others engaging in a process arising “directly” from a patented process.58 The expression “directly” may be interpreted in different ways. This divergence should be assessed by considering the possibility of the patent holder obtaining the appropriate compensation for the exploitation, examining whether undue economic exploitation by a third party has occurred and whether the solution is consistent with the purpose of ensuring legal protection.59 The misuse of patents constitutes a civil wrong liable to compensation.
Thus, Brazilian law gives a patent holder the power to prevent third parties from engaging in acts that infringe the right of ownership. Such power exists even if such acts have occurred independently, unless they fall under the cases of Articles 43 and 45 of the LPI, in which case they would be in accordance with Article 28(1) of the TRIPS Agreement.60 So, any of these activities listed in Article 42, when unauthorized, constitutes a direct infringement of the right of the patent holder. Thus, Brazilian law gives a patent holder the power to prevent third parties from engaging in acts that infringe the right of ownership. Such power exists even if such acts have occurred independently, unless they fall under the cases of Articles 43 and 45 of the LPI, in which case they would be in accordance with Article 28(1) of the TRIPS Agreement.61 So, any of these activities listed in Article 42, when unauthorized, constitutes a direct infringement of the right of the patent holder.
The criminal aspect of patent infringement is somewhat distinct and is defined by Article 184 of the LPI:
It is a crime against the patented invention or utility model to:
I – export, sell, expose or put up for sale, stock, conceal, or receive, for economic purposes, a product whose manufacturing infringes a patent for invention or utility model, or a product obtained through a patented process; or
II – import a product protected by an invention patent or utility model patent, or a product obtained through a process patented in the country, for the purposes set out in the item above, and that has not been placed on the foreign market directly by the patent holder or with their consent.
Article 42(2) of the LPI clarifies that a process patent, referred to in Article 42(II), is infringed when the processor fails to prove that their product was obtained by a manufacturing process other than that protected by the patent. This rule reverses the burden of proof, placing it on the infringer.
Direct or literal infringement occurs when each element of the infringing product coincides with the definitions contained in the claim.62 In literal infringement, the meaning or scope of an expression in the claim may need to be interpreted; however, once the expression has been interpreted, and its extension has been established, correspondence with the infringing product is immediate.63
3.5.1.2 Indirect patent infringement
A patent holder may also prevent third parties from contributing to the practice of such infringing acts by others (Article 42(1) of the LPI).
The description of the criminal offense, contained in Article 185 of the LPI, is somewhat more limited: “To provide a component of a patented product, or material or equipment to carry out a patented process, provided that the final application of such component, material, or equipment necessarily entails the exploitation of the object of the patent. Penalty – imprisonment, from 1 (one) to 3 (three) months, or fine.”
Jurists believe that an extensive interpretation of the wording of Article 42(1) of the LPI could hold accountable anyone who sells common spare parts, which can be used for purposes unrelated to a patented invention. This could unduly favor the patent holder. For this reason, it has been argued that a more balanced interpretation would be that a person allegedly committing the indirect or contributory infringement induces someone else, at least partially, to commit some of the infringements listed in Article 42 of the LPI.64
3.5.1.3 Infringement by equivalence
Infringement by equivalence occurs when an element of a product does not fall directly under the definition of the element in the patent claim but instead constitutes a technical equivalent of it.65 Such equivalence may be direct – for the purpose of extending the scope of the terms of a claim – or inverse – for the purpose of restricting the scope of the claim to terms equivalent to those mentioned in the specifications.66 In this sense, Article 186 of the LPI describes the following: “The crimes mentioned in this Chapter [referring to Articles 183–186 of the LPI] are characterized even if the infringement does not reach all claims of the patent or is restricted to the use of means equivalent to the object of the patent.” Although providing for criminal wrongs, they also indicate civil wrongs.
According to jurists, although there are no positive rules, there are two limiting inferences from the finding that equivalence cannot be extended to an accused product that is within the state of the art, nor can it be extended to allow the patent holder to recover protection that they gave up during the processing of the patent application.67 Although the LPI does not provide for the application of process history, it is possible to support the possibility of its compliance given the principle that does not allow the venire contra factum proprium (acting in a contradictory manner) that arises from objective good faith.
The LPI does not establish criteria for interpreting claims by equivalence. However, jurists have suggested that claims should be interpreted considering the legal meaning of their terms, the specifications and additional information from the available state of the art, the history of processing, and the general meanings of the words in the claim in the technical field.68
3.5.1.4 The reverse doctrine of equivalents
The LPI does not expressly provide for the application of reverse equivalence. However, jurists have held that, when a restrictive interpretation is needed to avoid the determination of nullity of a patent, the patent holder may request this restrictive interpretation to obtain partial nullity.
3.5.1.5 Extraterritorial infringement
If an unauthorized third party seeks undue economic advantage over a patented invention, an infringement may be recognized, even if it occurred outside Brazilian territory.69
In the case of imports for patent exploitation and of imports provided for in Article 68(3) of the LPI, Article 68(4) of the LPI allows third-party imports of a product manufactured according to a process or product patent, as long as it has been placed on the market directly by the holder or with their consent.
3.5.2 Defenses
A third party may claim that they did not violate patent law. However, in this case, when it comes to the infringement of a process patent, the burden of proof is reversed (Article 42(2) of the LPI).
3.5.2.1 Absence of liability
For an accused infringer to avoid being held liable, it is possible to claim the provisions of Articles 43 and 45 of the LPI, which, by express legal definition, stipulate circumstances in which a patent is not infringed. Patent nullity may also be claimed, at any time, as a defense.
Article 43 of the LPI provides for cases in which a patent is not infringed. For example, acts committed privately and without commercial purposes by unauthorized third parties do not infringe a patent as long as they do not harm the patent holder’s economic interests (Article 43(I) of the LPI).
A person who exploited, in good faith, the subject matter of a patent in Brazil before the filing or priority date of a patent application is ensured the right to continue with such exploitation, without burden, as before (Article 45 of the LPI). This right is not ensured to a person who became aware of the patent’s subject matter by the disclosure made pursuant to Article 12 of the LPI, as long as the application has been filed within one year of the disclosure (Article 45(2) of the LPI). The right granted pursuant to this article may be assigned only to the business or company, or a company representative directly related to the exploitation of the patented object, by disposal or lease (Article 45(1) of the LPI).
3.5.2.2 Consent or license
Third parties may claim to have a license authorizing their use of the patent. This would exempt them from liability for alleged infringement.
3.5.2.3 First-sale (exhaustion) doctrine
The principle of the exhaustion of patent rights is provided for in Article 43(IV) of the LPI. Under this provision, a third party may also claim to have a product that has been manufactured according to a process or product patent and that has been placed on the domestic market directly by the patent holder or with their consent. Consent or placement on the market by the patent holder are conditions for the exhaustion of the patent holder’s right. Exhaustion refers to the product sold, not to the patent as a whole. However even if primary exploitation is not carried out by the patent holder, the acts of the secondary exploitation may still constitute an infringement.70
If there is more than one holder of the patent, it is necessary to check whether any of them had the right to place the product on the market or to grant a license. If so, this right is exhausted in relation to the others. Otherwise, there may be no exhaustion.
For patents relating to living matter, patent law is also not infringed if third parties use, circulate or sell a patented product that has been lawfully introduced into the market by the patent holder or license holder, provided that the patented product is not used to multiply or propagate the living matter for commercial purposes (Article 43(VI) of the LPI). Additionally, patent law is not infringed if third parties use the patented product as an initial source of variation or propagation to obtain other products without commercial purposes. Finally, there is no infringement for acts performed by unauthorized third parties, related to the protected invention and intended exclusively for the production of information, data and test results aimed at obtaining a trade license – in Brazil or in any other country – for the exploitation and sale of the patented product after expiration of the time limits set forth in Article 40 (Article 43(VII) of the LPI).
Article 43(IV) of the LPI provides for exhaustion only for products placed on the domestic market by the patent holder or with their consent. Therefore, holders may exercise their right to prevent the parallel importation if they import their product, even if the product is placed on the foreign market by the patent holder or with their consent.71