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.