3.6 Judicial patent proceedings and case management
3.6.1 Venue, jurisdiction and case assignment rules
Whenever the INPI takes part in the case, which happens in patent nullity proceedings, the federal courts have absolute jurisdiction, intuito personae, which must be declared by the judge on their own initiative, under penalty of nullity of the proceedings. However, jurisdiction of the federal courts is not attracted if the patent nullity claim is merely incidental as a defense in an action where there is an allegation of patent infringement.
Regarding state courts’ jurisdiction to decide on cases of patent infringement, such cases must be assigned according to territorial jurisdiction. If there is specialization, as it is a matter of judicial organization, then it is a case of absolute jurisdiction. Where it is not a case of absolute jurisdiction, there is a possibility of choosing the venue to file the action. Such an option is limited to the provisions set forth by law – that is, the legal system may establish more than one legal venue for the processing of the same case.
The Brazilian legal system admits two types of jurisdiction: absolute and relative. The difference between them is based on the mandatory establishment of a certain court for the processing and trial of the case. In absolute jurisdiction, once the appropriate court is defined by the legal system, the case assigned to it cannot, under any circumstance, be processed and tried in another judicial unit other than that set forth by the law. The trial of a case by a court that has not been previously defined as appropriate for doing so by law necessarily implies nullity of the judgment, even if none of the parties contests this point in the case.
It should be noted that the procedural law imposes on the judge the duty to examine, on their own initiative, the case of absolute jurisdiction, pursuant to Article 64(1) of CPC. In addition, if the defendant challenges the jurisdiction and its nature, Article 64(2) also requires the judge to analyze this defense argument immediately, regardless of the stage of the case. Where a lack of absolute jurisdiction is found, the judge must order the case to be sent to the court of competent jurisdiction as defined by the law.
In the case of relative jurisdiction, although the law establishes, a priori, the court where the case must be processed, should the plaintiff file the case before another court, any processing by the latter does not imply nullity of the case or trial. Furthermore, the STJ has settled case law in the sense that a judge is prohibited from analyzing, by their own initiative, a dispute regarding the existence of relative lack of jurisdiction.72
This does not mean, however, that a party is free not to follow the legal provision regarding relative jurisdiction. A case remains permanently with the judge to whom the case was assigned only if the opposing party does not challenge it. However, this challenge cannot be presented at any time: Article 65 of the CPC determines that a challenge to relative jurisdiction must be presented in the answer. If the judge finds that their jurisdiction is not included among those provided by law, they must refer the case to the legally indicated judicial unit. Even if a case is filed before a court that lacks relative jurisdiction, there is no nullity if the issue is not expressly contested (perpetuatio jurisdicionis).
This system of absolute and relative jurisdiction is also applicable to urgent reliefs and has consequences for the court’s definition of the definitive proceedings (i.e., prevention).
After defining the jurisdiction of the federal and state courts and for nullity and patent infringement cases, it is necessary to then verify which court is competent. To do so, the criteria established in Articles 42–53 of the CPC must be observed. Jurisdiction is determined at the time of filing or assignment of the complaint, and subsequent changes in the factual or legal status that may occur are irrelevant, except when they suppress the judicial body or change the absolute jurisdiction (Article 43 of the CPC). Subject to the provisions of the Federal Constitution and the CPC, the court with jurisdiction over the case is defined based on the rules of judicial organization.
For cases based on personal rights, the court with jurisdiction is defined as the court located in the jurisdiction of the defendant’s domicile (Article 46 of the CPC). If there is more than one domicile, the defendant can be sued in any of them. If two or more defendants have different domiciles, they can be sued in any of their venues at the plaintiff’s choice (Article 46(2) of the CPC). Where the defendant does not have a domicile or residence in Brazil, the case must be filed in the venue of the plaintiff’s domicile, and, if the plaintiff also resides outside Brazil, the case can be filed in any venue (Article 46(3) of the CPC). When a case addresses damages, Article 53(IV) of the CPC defines the court with jurisdiction as the venue of the place of the act or fact related to the action.
An interesting peculiarity regarding the defense of defendants and the Brazilian judicial organization is that it is possible to claim the nullity of the patent incidentally in an action for damages or for the declaration of non-infringement (Article 56(1) of the LPI), although the nullity action is processed at the federal level (Article 57 of the LPI), and the other actions are processed at the state level.
It is possible for actions for annulment and for damages to be processed simultaneously. In this scenario, the judge of the action for damages may recognize the external priority of the former over the latter, suspending the progress of the latter (Article 313(V) of the CPC). In this sense, “[e]xternal priority is characterized if there is a pending lawsuit, in a case extrinsic to the present one, in which the nullity of the patents on which the main subject matter of this action is based, even if the appellant is not a party to the cases.”73
Recently, there has been a change in the case law of the STJ. Previously, it did not allow state courts to analyze the nullity of patents, even incidentally,74 but now it does:
although the incidental recognition of the nullity of trademarks is not possible, the incident tantum (incidental) examination of the nullity of patents and industrial designs is perfectly possible; this possibility results from the express determination under the law […] as a matter of defense in infringement actions, within the jurisdiction of the State Courts; in these cases, INPI’s participation is waived.75
This change in the STJ’s understanding raises questions that still need time to be debated by the Brazilian case law – namely, is it possible for the evidence produced in state courts to be presented in federal courts? Does one action suspend the other? Is it possible for the evidence to be produced in judicial cooperation, and what does the CPC say about it? As this is a recent change, there are yet no answers to these questions.
3.6.1.1 Interaction with other types of cases
Brazilian law admits the possibility of the joinder of two distinct actions upon the occurrence of a “connection” (“continência”). Under the terms of Article 55 of the CPC, two or more actions are considered connected when they have a common request or cause of action. Cases that could imply a risk of rendering conflicting or contradictory decisions if decided separately, even without any connection between them, may also be brought together to be decided jointly. However, to allow the joinder of the cases, it is essential that none of them have yet been decided.
Cases may also be considered connected and can therefore be joined when there is an identity as to the parties and to the cause of action, but the relief sought in one, being broader, embraces the relief sought in the other cases (Article 56 of the CPC).
The joinder of the actions filed separately takes place in the court that obtained jurisdiction by prevention, in which they will be decided simultaneously (Article 58 of the CPC). In this context, the filing or assignment of the oldest complaint to the court is considered to be obtaining prevention (Article 59 of the CPC).
As for patent nullity actions and actions for damages, although there may be a connection between these actions, it is not possible to join these cases due to the absolute jurisdiction of the federal and the state courts, respectively. In this case, the state court with jurisdiction over the action for damages may determine its suspension if it understands that there is an external priority.
Pursuant to Article 313(V)(a)–(b) of the CPC, a case is suspended when the judgment on its merits (a) depends on the judgment of another case or the declaration of the existence or nonexistence of a legal relationship that constitutes the main subject matter of another pending case, or (b) needs to be rendered only after the verification of a certain fact or the production of certain evidence as requested by another court. During such a suspension, it is forbidden to practice any procedural act; nonetheless, the judge may order the execution of urgent acts to avoid irreparable damage (Article 314 of the CPC).
It is possible to suspend civil proceedings, at the discretion of the civil judge, if the entertainment of the merits depends on verification of the existence of a criminal offense (Article 315 of the CPC). If the criminal action is not filed within three months of the notification of the suspension, the effect of the latter ceases, and the civil judge is responsible for examining the priority issue incidentally (Article 315(1) of the CPC). If the criminal action is filed, then the case is suspended for a maximum of one year, at the end of which the civil judge will be responsible for examining the priority issue incidentally (Article 315(2) of the CPC).
3.6.1.2 Bankruptcy
Article 6 of Law No. 11,101, of February 9, 2005 (a law regulating bankruptcy and court-supervised reorganization in Brazil),76 provides that a declaration of bankruptcy or the granting of a court-supervised reorganization procedure does not affect the processing of actions that demand illiquid amounts or that request a declaration of nullity. The illiquid actions continue to be conducted by the judge of the case, to whom they would have been assigned had there been no bankruptcy, considering ordinary rules and assignment of jurisdiction. Once the sentencing of a bankrupt company for patent infringement is determined, the creditor must file a proof of claim within the scope of the bankruptcy procedure.
3.6.2 Statements of case
In Brazil, the delimitation of a dispute is defined in the procedural system by the complaint, the answer or even the counterclaims. Equally, there is no provision in Brazilian law for an evidentiary or construction stage by the parties to the claim prior to the submission of the case to the judge. For a judge to be able to conduct a dispute, there must be a presentation of the theory and the legal claim (Article 2 of the CPC).
3.6.2.1 Complaint
Brazilian law determines that the requests that one intends to make before another party must be made immediately in a procedural document called “complaint,” which initiates the lawsuit before a judge. According to express legal determination, the legal theories, presentation of the factual circumstances and existing documentary evidence must be indicated at the first opportunity in which the party is to make a statement in the case record (i.e., at the initial moment, for the plaintiff; at the time of presentation of the defense, for the defendant). Requests before the other party delimit the judge’s scope of cognizance, which will be further delimited after the answer is presented. This is because the judge cannot, under penalty of nullity, decide neither more nor less nor different from what was requested (Article 141 of the CPC).77
Holders of patent registrations, licenses and preference requests have standing to sue before the judiciary. With respect to the documents that must be attached to the complaint for such entities, the following are mandatory: power of attorney, articles of incorporation, proof of payment of costs, power of attorney of the foreign interested party (and valid in Brazil), proof of the security deposit (when required). Besides these, essential documents for verifying the standing of the parties include letters patent, licenses, registrations, receipts of priority requests before the INPI.
Thus, there is no preparatory phase, prior to the filing of an action, in which the parties may have the opportunity to present evidence and theories (Article 347 of the CPC). Instead, this dialogue between the parties, in Brazilian law, only occurs after the action is filed, in a procedure conducted by a judge, the rules of which are provided for in law and which largely, given the public nature of procedural law rules, cannot be changed by the parties or by the judge, under penalty of nullity.
The law provides that, after the initial request has been made, the legal provisions that allow its change are restricted. After the initial presentation, the plaintiff can change the request or cause of action until the service of process, without the defendant’s consent. After the service of process, the plaintiff can still make such changes until the pre-trial order, though, in this case, it requires the defendant’s consent (Article 329 of the CPC). After the pre-trial order, the plaintiff can no longer change the request. Conversely, the defendant has the burden of the specific objection.
Thus, it is reasonable to state that all legal theories and all important facts must be mentioned in the complaint or answer, upon express legal imposition. The plaintiff may also, in view of defendant’s defense, present a new statement, rebutting the clarifications provided, after which the case will be considered by the court. The defendant may present, in addition to the defense, a request against the plaintiff, in which case the latter must subsequently present a defense. This request against the plaintiff can be done in the same case, provided that there is no procedural incompatibility.
Before the pre-trial order, the judge will determine that the parties, in view of the statements made and the documentary evidence produced in this first stage of the process, present requests for evidence. After such a statement, the judge assigns the burden of proof between the parties and analyzes the possible occurrence of nullity defects to remedy them, if possible, and to define the disputed points between the parties, as well as the facts and rights.
There is, therefore, the presentation of the initial request, accompanied by the presentation of the legal theories and of the facts (i.e., the cause of action), as well as the request itself (Article 319 of the CPC). This must also contain the documents that already exist and are necessary for the cognizance of the action (Articles 320 and 434 of the CPC).
Exceptionally, a judge may admit the subsequent presentation of documents: in cases of Article 435 of the CPC and of court authorization for additional documentary evidence and complementation during expert analysis (Article 473(3) of the CPC).
3.6.2.2 Answer
The defendant, in their answer, has the burden of objecting all aspects of what was alleged in the complaint, under penalty of preclusion (Articles 335–342 of the CPC). That is, the defendant does not have another opportunity in the case to make such objections (Article 336 of the CPC). Additionally, facts alleged by the plaintiff and not objected by the defendant are considered true (Article 341 of the CPC).
Therefore, a failure to present a defense has two consequences: the loss of the burden of objection and the assumption that the facts presented by the plaintiff are undisputed. However, procedural defenses may be alleged, such as lack of jurisdiction and parallel litigation; an allegation of connection, suspension or priority; an allegation of an arbitration agreement or the plaintiff’s lack of standing; and other preliminary matters. The merits and scope of the complaint may also be objected to.
Unlike the complaint, however, the defense may be less exhaustive in explaining opposing points. This is because, in view of the dynamics of the burden of proof, it is, in theory, the plaintiff’s duty to detail what is necessary to explain how a given process, object, manufacturing or element has been violated by the defendant. In this case, if the defense is limited to objecting the occurrence of these facts, there is no need for further detail, although it is recommended that the defendant has their own structure to present its opposition to the allegation. Conversely, if the defense results in the presentation of facts that “modify, extinguish or prevent” the plaintiff’s rights – that is, facts that change the dynamics of the narrative exposed in the complaint – the defendant is subject to the same standard of reasoning, including the attribution of the burden of proof, pursuant to Article 373 of the CPC.
It is possible to establish joinders of defendants due to a multiplicity of parties responsible for the undue exploitation of the same patent (Article 113 of the CPC).
3.6.2.3 Counterclaim
During the term for the answer, which is 15 business days (Article 335 of the CPC), the defendant may also, if it is in their interest, make their own requests against the plaintiff (Article 343 of the CPC). The defendant can present these requests regardless of whether they present an answer (Article 343(6) of the CPC). In theory, such requests must be made and articulated as if they were a separate case against the plaintiff. However, the procedural legislation allows these requests to be made during the case filed by the plaintiff (Article 343(6) of the CPC).
It is required of counterclaims that the request be connected with the main action or with the ground of the defense. It must also comply with the assumptions of the complaint (because they have the nature of a request) and requires that the plaintiff has standing to be sued by the defendant, though it is possible, however, for a third party to also act as the defendant in the counterclaim (Article 343(3) of the CPC).
After the counterclaim is filed, the plaintiff is summoned, by means of their attorney, to file an answer within 15 days. The withdrawal of the main action or the occurrence of an extinguishing cause that prevents the examination of its merits does not prevent the continuation of the counterclaim proceeding (Article 343(2) of the CPC).
3.6.3 Case management
In the ordinary procedure, which is applied to civil lawsuits filed in accordance with the LPI provisions, there is a provision for a prior conciliation hearing before the presentation of the answer (Article 334 of the CPC). However, although the wording of the CPC suggests that this hearing is mandatory, it is not carried out in many cases.
Thus, in Brazilian law, the plaintiff has the autonomy to make a request as they wish, and the defendant has the burden of questioning it, in view of the principle of preclusion. The parties also have a duty to act in good faith and to cooperate (Articles 5–6 of the CPC). These factors guide the case management that can be performed by the judge, which is based on the powers granted to them by the CPC:
The judge will conduct the case according to the provisions of this Code, being responsible for:
I – ensuring the parties equal treatment;
II – ensuring the reasonable duration of the case;
III – preventing or repressing any act contrary to the dignity of justice and rejecting merely delaying requests;
IV – determining all inductive, coercive, mandatory or subrogatory measures necessary to ensure compliance with a court order, including in cases in which the subject matter is a monetary obligation;
V – promoting, at any time, the resolution of the dispute by the parties themselves, preferably with the aid of court conciliators and mediators;
VI – extending procedural terms and changing the order of production of evidence, adjusting them to the needs of the conflict so as to grant greater effectiveness to the protection of the right;
VII – exercising police power, requesting, when necessary, police force, in addition to the internal security of the courts and venues;
VIII – ordering, at any time, the personal presence of the parties to question them about the facts of the case, in which case the confession penalty will not apply;
IX – determining the compliance with procedural requirements and the resolution of other procedural defects;
X – when facing several repeated individual claims, notifying the Public Prosecutor’s Office, the Public Defender’s Office, and, as far as possible, the other legal entities referred to in Article 5 of Law No. 7,347, of July 24, 1985, and Article 82 of Law No. 8,078, of September 11, 1990, so that, if applicable, they may promote the filing of the respective class action.
Sole Paragraph. The extension of terms provided for in item VI can only be determined before the regular term is ended. (Article 139 of the CPC)
Considering the legal powers granted to the judge, it is possible to identify the following case management tools that are at the judges’ disposal:
- referral of the case to conciliation or mediation;
- pre-trial order;
- trial hearing;
- flexibility of procedures;
- scheduling of procedural acts and terms (Article 191 of the CPC);
- extension of dilatory terms;
- change in the order in which evidence is to be produced;
- use of expert evidence, the judge being able to use the traditional model, informal expert evidence or out-of-court expert evidence; and
- procedural legal transactions (Article 190 of the CPC).
The Brazilian civil procedure adopts an eclectic theory of the right of action. Thus, the action itself must be understood as a right to take a certain dispute to the judiciary, which analyzes it upon compliance with certain conditions (i.e., the interest in the action and legal standing). The lack of such compliance imposes the dismissal of the case without prejudice (allowing the filing of a new lawsuit upon rectification of the defect). For part of the Brazilian judiciary, when the analysis of these conditions depends on evidence to be produced during the case, there is no analysis of conditions per se but of the merits themselves, which affect the possibility of bringing a new claim. Conversely, procedural interest is defined based on adequacy and necessity. Procedural adequacy may be limited when an administrative proceeding is pending, especially with regard to the designation of coauthorship of the invention, because in those situations the necessity of a judicial claim is unclear.
Therefore, considering the regulation of procedure in Brazilian legislation, a party is compelled to allege all possible issues – either in the complaint or in the answer – to avoid the risk of preclusion. Furthermore, as this exposition of legal theory and evidence is already made within the scope of the court case, subjecting the losing party to the payment of procedural costs and expenses, it can be observed that settlements are infrequent in the initial phase of the trial, when it is before the lower court.
After the parties have expressed their opinion, the organization of the case is then made by a judge. In addition to verifying whether there are procedural defects for remediation, the judge may verify the possibility of judging the case as found without additional evidence, partially judging the case or determining the evidence to be produced (Article 357 of the CPC). To adopt the best possible direction for the case, the judge must, therefore, consider the limits that are provided for in law – namely:
- the limit of disputed issues between the parties that were defined based on their previous statements in the case (complaint, answer and reply or, occasionally, a procedural legal transaction between them relating to this topic). It is important for the judge to consider the limits defined by the parties for the cognizance of the disputed issue, since the judge’s performance beyond, more or less than what was requested will be considered irregular (Article 141 of the CPC); and
- the limit defined in law for the freedom to act, since, in Brazilian law, there are formal issues that cannot be changed even upon an agreement between the parties or upon determination of the court, under penalty of nullity of the procedure.
Although there is no legal definition of absolute and relative nullities, jurists have agreed that the former must be acknowledged at the judge’s own initiative and cannot be remedied (see Article 278 of the CPC), while the latter can be validated, if not mentioned, and if, in any other way, they achieve the intended purpose (see Articles 276–277 of the CPC). This way, for example, a judge cannot rule out the action of the Public Prosecutor’s Office, whose function is to protect the unable, under penalty of nullity. Defects in the service of process are also not validated unless the party spontaneously makes a statement in the case record.
With regard to the procedure itself, some issues have already been predefined in law: for example, the terms for defense, the assignment of the burden of proof, the hypotheses of procedural preclusions and the assignment of jurisdiction, which can only be changed by the parties or by the judge if there is an express provision, as will be seen below.
To assign the burden of proof, the judge must delimit the issues of law and fact that are the subject matter of the dispute; assign the burden of proof between the parties; determine the evidence that is to be produced (Article 357 of the CPC) – granting or not the request of the parties in this regard; and, as the case may be, designating a trial hearing. The law provides for a general rule on the assignment of the procedural burden of producing evidence. Article 373 of the CPC clearly assigns the burden of proof between the parties:
The burden of proof is incumbent upon:
I– plaintiff, as to the fact constituting his/her right;
II– defendant, as to the existence of a fact that prevents, modifies, or extinguishes plaintiff’s right.
Paragraph 1. In the cases provided for in law or in view of peculiarities of the case related to the impossibility or excessive difficulty in fulfilling the charge under the terms of the head provision or the greater ease of obtaining proof to the contrary, the judge may assign the burden of proof in a different manner, provided that the judge does so by means of a reasoned decision, in which case the judge must give the party the opportunity to claim the discharge of the burden assigned to it.
Paragraph 2. The decision provided for in Paragraph 1 of this article cannot generate a situation in which the discharge of the burden by the party is impossible or excessively difficult.
Paragraph 3. The different assignment of the burden of proof may also occur upon agreement between the parties, except when:
I– it falls on the party’s unwaivable right;
II– it makes it excessively difficult for a party to exercise the right. Paragraph 4. The agreement referred to in Paragraph 3 may be entered into before or during the case.
Regarding the plaintiff’s procedural burden, the CPC establishes the need for a precise definition of the cause of action and, above all, of the request, since both will limit the scope of the judge’s actions.
This general rule on the assignment of the burden of proof is strict, but it may be waived by the judge in specific cases. The judge cannot make exceptions to the general rule on the assignment of the burden of producing proof if the discharge of the party is impossible or excessively difficult.
If the issues are very complex, the judge may schedule a cooperative pre-trial hearing so that the parties can clarify their allegations and contribute to the definition of the disputed points and the assignment of the burden of proof, which always remains under the responsibility of the judge (Article 357(3) of the CPC). The parties may also, by mutual agreement, present to the judge the delimitation of the disputed matters of fact and of law (Article 357(2) of the CPC).
If the judge determines the production of expert evidence, the judge must, as far as possible, immediately present a procedural schedule for its realization (Article 357(8) of the CPC) and also a possible trial hearing for the hearing of witnesses.
It is also necessary to state that a judge cannot render decisions without having given the opposing party an opportunity to express its opinion, even though the judge may decide at their own initiative, except in exceptional cases, such as those of interlocutory relief and relief based on evidence (Articles 9–10 of the CPC).
As a rule, procedural terms are defined by law. The term for filing and objecting appeals is considered a rule of public law, as it is directly related to the exercise of the constitutional guarantee of adversarial procedure and of the opportunity to be heard, which cannot be changed by the judge. The judge can only extend – not reduce – secondary terms of the procedure, such as the presentation of documents, the indication of the list of witnesses and the statements on documents, among others (Article 139(VI) of the CPC).
For cases that admit resolution by the parties themselves, the CPC allows the parties to stipulate changes to the procedural timelines to adjust them to the specificities of the case and to agree on the procedural burdens, powers, rights and duties before or during the case (Article 190 of the CPC). In this case, the judge, at their initiative or at the request of the opposing party, controls the validity of such agreements, refusing their application only in cases of nullity, abusive insertion in an adhesion contract or where any party is in a manifest situation of vulnerability (Article 190(1) of the CPC). The scheduling was an innovation of the CPC/2015, not allowed in the CPC/73.
It is also possible for the parties, together with the judge, to set a calendar for the practice of procedural acts, when applicable (Article 191 of the CPC). Such a calendar is binding upon the parties and the judge, provided that the terms therein are only modified in exceptional cases and if duly justified (Article 191(1) of the CPC). The parties need not be notified to perform a procedural act or to hold a hearing when the dates have been designated in such a calendar (Article 191(2) of the CPC).
In the absence of any specific provision by the parties, by mutual agreement and considered valid by the judge, it is common (though not a rule) for many judges, after the complaint and answer, to grant a common term for the parties to reiterate their requests for evidence, specifying and justifying their need in light of the theories presented during the course of the case. Although a common practice, this expectation should not replace the ’parties’ precaution of submitting, in the complaint or answer, an express request for evidence. This is because only an express request for evidence may be the basis for a possible appeal seeking the annulment of a trial due to the denial of the opportunity to be heard.
With respect to requests for the production of evidence, or in the absence thereof, the judge proceeds with the pre-trial order, assigning the burden of proof according to the general rule in Article 373 of the CPC, considering, occasionally, the terms of the procedural agreement entered into between the parties (Article 190 of the CPC). It is also possible for the burden of proof to be reallocated in the course of the case upon a reasoned decision of the judge (Article 373(1) of the CPC). Note that this reallocation can occur either upon request or by a decision of the judge at their own initiative. It is worth noting that the special industrial property legislation, the LPI, does not have specific standards for proof, so the general rule of Article 373 of the CPC applies.
The pre-trial order and organization of a case occur by means of the judge’s decision. This decision marks the end of the so-called pleading stage. This means that, as of this decision, it is no longer possible to change the facts and the requests presented. It is in this decision that the judge determines the removal of pending procedural issues, determining their correction when applicable, and establishes the factual and legal disputed points that will be taken to trial. The requests for evidence are also analyzed in this decision.
Exceptionally, a judge may analyze the requests for evidence separately when the judge understands that several pieces of requested evidence are related with respect to priority. That is, if the production of a piece of evidence may fully define the outcome of the case, the judge may order the production of this evidence and, only after it is produced, verify if it is still necessary to produce evidence related to subsidiary issues.
In the Brazilian system, it is exclusively incumbent upon the judge to define which points are accepted as the subject matter of the evidentiary stage. There is no legal rule or case law that limits the points to be heard. In practice, judges tend to establish only factual points because, in theory, it is not necessary for the judge to follow only the legal theories presented by the parties. Exceptionally, however, judges may choose to define disputed legal points when they believe that they are dealing with matters complex or unusual in the daily life of the court. It is important to point out that the judge’s nonacceptance of certain points for the analysis of the dispute may be subject to objection by the parties.
Exceptionally, the presentation of the disputed points may be performed in a hearing specially designated for this purpose. This possibility is provided for in law (Article 357(3) of the CPC). However, such a hearing is not a necessary step in the procedure, and even upon request, the judge may refuse to hold one. Conversely, considering the complexity of some cases involving patents, such hearings may be an important tool for rationalizing the case, provided that the interested party does not disregard this possibility. This is because, at the specially designated hearing, it is possible to present the judicial treatment and the possibility of acts to be performed at the hearing: the presentation of a report, approval of a procedural agreement, mutual definition of the disputed points, definition of the limits of expert analysis, presentation of video material and so on.
3.6.4 Summary proceedings
Lawsuits involving patents are all governed by the ordinary procedure; summary proceedings do not apply to such matters (Article 318 of the CPC). If a judgment can be rendered solely based on documentary evidence presented by the parties in the complaint or defense, then it is possible for the judge to render such a decision pursuant to the case record at the moment, without the need for the production of additional evidence.
3.6.5 Evidence
3.6.5.1 Expert evidence
A major challenge to be faced by cases involving patent law is the production of expert evidence because, as a rule, they are complex and require professionals with specialized knowledge. It is necessary to note that, although expert evidence is important – because it is a technical opinion that contributes to the assessment of a potential infringement of patent law – it does not bind the judge. This is because the principle in Brazilian law is that a judge has exclusive jurisdiction to apply the law after examining the facts alleged and the evidence produced.
As a rule, the expert is appointed by the judge (Article 465 of the CPC). Nevertheless, it is possible for parties to present, by mutual agreement, another expert they wish to analyze the case. In addition to the official expert, parties are entitled to appoint technical assistants, who will be allowed to follow up on the steps taken by the expert. In case of a complex expert analysis that covers more than one area of specialized knowledge, the judge may appoint more than one expert, and the party may appoint more than one technical assistant (Article 475 of the CPC). Experts must be registered with each court’s system.
Expert evidence comprises an examination, inspection or evaluation but is rejected by the judge if the evidence of the fact does not depend on the special knowledge of a technician, if it is unnecessary in view of other evidence produced, or if verification of the evidence is impossible.
The expert must ensure that the technical assistants of the parties have access to and follow up on the measures and examinations that the expert carries out, provided that the assistants are previously notified of the acts. The parties will be notified of the date and place designated by the judge or indicated by the expert to start the production of evidence.
The expert may be replaced if they lack technical or scientific knowledge or if, for no legitimate reason, they fail to comply with the assignment within the term they were granted. The expert and the technical assistants must deliver the report and opinions, respectively, within a period set by the judge.
After the expert is appointed, the parties must present their questions to the expert. These items are answered by the expert together with the disputed points established by the judge in the pre-trial order. This is the moment when the party must go deep in attributing the technical details about the kind of patent infringement.
Parties may also, within 15 days from the notice of the order appointing the expert, argue for the refusal of the expert due to a conflict of interest or disqualification and submit questions. They may present additional questions during the measure, which may be answered by the expert in advance or at the trial hearing. The judge has a duty to dismiss impertinent questions and put forward questions that the judge deems necessary to clarify the case (Article 470 of the CPC).
There is no legal limitation to the number of questions; however, the opposing party may object to questions that are not covered by the disputed points established in the pre-trial order or that go beyond the limits of the expert evidence also defined by the judge. Since the judge may divide the production of evidence, it is possible for questions related to the part postponed to a subsequent examination to be rejected, without prejudice to resubmission, if a new expert examination is granted on that part of the evidence.
The expert is prohibited from exceeding the limits of their designation and from issuing personal opinions that exceed the technical or scientific examination of the subject matter of the expert analysis. Their report must contain the following:
I – the exposition of the subject matter of the expert analysis;
II – the technical or scientific analysis carried out by the expert;
III– the indication of the method used, clarifying it and demonstrating that it is predominantly accepted by specialists in the field of knowledge from which it originated; [and]
IV– the conclusive answer to all the questions presented by the judge, the parties, and the Public Prosecutor’s Office. (Article 473 of the CPC)
The expert must file a report in court within the term set by the judge and at least 20 days before the trial hearing. The parties can be summoned, if they wish, to express their opinion on the expert’s report within a common term of 15 days, provided that the technical assistant of each party may, within the same term, present their respective opinions.
The expert of the court has the duty to clarify, within 15 days, any point on which there is disagreement or doubt by either party, by the judge, by the Public Prosecutor’s Office or in the opinion of the technical assistant of a party. If further clarification is still necessary, a party can request the judge to summon the expert or technical assistant to attend the trial hearing, making, at that moment, the questions in the form of requirements. If a matter is not sufficiently clarified, the judge will determine, at their own initiative or at the request of a party, the carrying out of new expert analysis.
Finally, the Brazilian system also admits a simplified model of technical evidence consisting of the presentation of an expert opinion. In this kind of evidence, the expert does not focus on a specific factual dispute. Instead, the purpose is only to solve technical doubts – based on the state of the art and on specialized literature – that will help the judge understand and decide the case. As it is a simplified model, it can be used only in specific cases, at the judge’s discretion, enabling cost reduction.
3.6.5.2 Testimonial evidence
The convenience of producing testimonial evidence is analyzed by the judge at the moment of the pre-trial order, assigning procedural burdens. As a rule, it is incumbent upon the parties to request the production of testimonial evidence and justify its need. It is possible, however, that even without a request by the parties, the judge determines at their own initiative that it is necessary to carry it out.
A list of witnesses is to be presented at least prior to the trial hearing. Procedural legislation provides for limits on the maximum number of witnesses allowed (Articles 357 (6)–(7), 450–463 of the CPC).
Questions are asked by the parties directly to the witness, starting with the party that called the witness. The judge will disallow questions that may induce the answer, that are not related to the matters of fact of the subject matter of the evidentiary stage, or that imply a repetition of another question already answered (Article 459 of the CPC). The judge may question the witness either before or after the inquiry made by the parties (Article 459(1) of the CPC).
3.6.6 Confidentiality
Intellectual property cases are, in principle, public. The interested party is responsible for requesting the granting of confidentiality in the case, which is at the discretion of the judge, who bases their decision on the provisions of Article 189 of the CPC, according to which
[p]rocedural acts are public, however, the following cases are processed closed to the public:
I – when the public or social interest so requires;
II – if the case concerns marriage, separation, divorce, steady union, filiation, support, and custody of children and adolescents;
III – cases containing data protected by the constitutional right to privacy; [and]
IV – cases that concern arbitration, including on compliance with the arbitration clause, provided that the confidentiality stipulated in the arbitration is evidenced before the court.
Paragraph 1. The right to consult the case record that is being processed closed to the public and to request certificates of their acts is restricted to the parties and their attorneys-in-fact.
Paragraph 2. The third party who demonstrates a legal interest may request from the judge a certificate of the judgment, as well as of the inventory and sharing resulting from a divorce or separation.
A request for closing the proceedings to the public must be accompanied by the grounds that justify its granting. The decision that considers this request is subject to an interlocutory appeal.
During search and seizure in a crime against a process patent, the court officer will be accompanied by an expert, who preliminarily verifies the existence of the illicit act, provided that the judge may order the seizure of products obtained by the infringing party by means of the patented process.
Article 206 of the LPI provides that, in the event of disclosure in court – for the defense of the interests of any party – of information that is characterized as confidential (whether industrial or commercial secrets), the judge must determine that the case proceeds closed to the public. In this situation, the use of such information by the other party for other purposes is also prohibited.
3.6.7 Alternative dispute resolution
Although the ordinary procedure provides for a conciliation or mediation hearing soon after the filing of the complaint (Article 334 of the CPC), a judge may adopt the use of alternative methods of conciliation at any time (Article 3 of the CPC). It is even possible to hold a conciliation phase before the procedure at the parties’ discretion. The agreement entered into, approved by a judge, has the effect of an instrument enforceable in court.
Mediation is governed by Law No. 13,140, of June 26, 2015,78 and consists of a technical activity exercised by an impartial third party without decision-making power who assists and encourages the parties to identify or develop mutually agreed solutions to the dispute. Mediation may be used in conflicts that involve waivable or unavailable rights that admit settlement.
The mediator is appointed by the court or chosen by the parties. A competent person, having graduated at least two years prior from a higher education course of an institution recognized by the Ministry of Education and who has been trained in a mediation school or institution recognized by the Brazilian National School for the Graduation and Development of Judges (Escola Nacional de Formação e Aperfeiçoamento de Magistrados) or by the courts, may act as a mediator, subject to the minimum requirements established by the National Council of Justice together with the Ministry of Justice (Article 11 of Law No. 13,140/15). The courts create and maintain updated registers of mediators who are qualified and authorized to act in court mediation (Article 12 of Law No. 13,140/15). The compensation paid to court mediators is set by the courts and borne by the parties (Article 13 of Law No. 13,140/15).
The law ensures the confidentiality of the procedure (Article 14 of Law No. 13,140/15). Additionally,
[a]ny and all information relating to the mediation procedure will be confidential with respect to third parties and may not be disclosed even in arbitration or court proceedings, unless the parties expressly decide otherwise or when its disclosure is required by law or necessary for compliance with the agreement reached by mediation.
Paragraph 1. The duty of confidentiality applies to the mediator, the parties, their representatives, lawyers, technical advisors and other persons of their confidence who have, directly or indirectly, participated in the mediation procedure, reaching:
I – statement, opinion, suggestion, promise, or proposal made by one party to the other in the search for an understanding on the conflict;
II – recognition of a fact by any of the parties during the mediation procedure;
III – statement of acceptance of a proposal for agreement presented by the mediator; [or]
IV – document prepared solely for the purposes of the mediation procedure.
Paragraph 2. The evidence presented in disagreement with these provisions will not be admitted in an arbitral or judicial proceedings. (Article 30 of Law No. 13,140/15)
The mediation procedure is closed with the drawing up of its final instrument, when an agreement is entered into or when new efforts to reach a mutual agreement are not justified, either by declaration of the mediator or by a statement of any of the parties (Article 20 of Law No. 13,140/15). The final instrument of mediation, in the event of an agreement, constitutes an instrument enforceable out of court and, when approved in court, becomes an instrument enforceable in court (Article 20(1) of Law No. 13,140/15).