An International Guide to
Patent Case Management for Judges

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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). 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). 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). 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).