3.7.2 Damages
The right to damages refers to the right to compensation for the improper exploitation of a patent’s subject matter, including exploitation that occurred between the date of publication of the patent application and that of the grant of the patent. The patent holder whose right has been violated has the right to obtain compensation for the undue exploitation of their object (Article 44 of the LPI). If the infringer obtained, by any means, knowledge of the content of the application filed, prior to its publication, the period of undue exploitation is counted, for the purpose of compensation, from the date the exploitation began (Article 44(1) of the LPI). If the subject matter of the patent application refers to biological material, deposited according to Article 24(1) of the LPI, the right to compensation will be granted only when the biological material has become accessible to the public (Article 44(2) of the LPI). The right to obtain compensation for undue exploitation is limited to the content of the patent’s subject matter according to Article 41, even in relation to the period prior to the granting of the patent (Article 44(3) of the LPI).
An injured party may file civil actions that they consider applicable pursuant to the CPC. Damages are determined by the benefits that the injured party would have received if the infringement had not taken place (Article 208 of the LPI). Article 225 of the LPI allows five years for the action for damages in view of the loss to the industrial property right.
The injured party also has a right to compensation for losses and damage caused by acts of infringement of industrial property rights and acts of unfair competition not provided for in the LPI – acts that damage the reputation or business of others or that create confusion among commercial, industrial, or service establishments, or among products and services being traded (Article 209 of the LPI).
Jurists have indicated the main challenges to ascertaining patent infringements:80
- a disregard for limitations in independent claims, in which the infringement is determined without observing the essential characteristics of the product or process under consideration and the existence of complete coincidence with the characteristics of the infringing product or process;
- when analyzing the basic inventive idea, or the general principle upon which the invention is based, not considering how the invention is claimed – “it is not the idea underlying the invention that is subject to protection, but the way the inventor materialized this idea, as claimed in the patent”;81
- product-to-product comparison – “the existence of coincidence between these products is utterly irrelevant, since the holder’s product may correspond to only one of the possible modalities of invention as claimed or even not correspond at all”;82
- the infringement of dependent claims – “[t]he distortion here lies in trying to assign dependent claims the same function of an independent claim by completely disregarding the limitations imposed by dependence”;83
- the protection of the inventive function – “[a]nother example of undue extrapolation of the scope of a claim lies in the notion that the patent protects the function performed by the invention, regardless of the restrictions imposed by the elements of the claim”;84
- the dependence on patents – “there is a common misconception that obtaining a patent grants its holder the unconditional right to exploit the patented invention. Of course, the fundamental right granted by the patent is not a right provided for in law, but rather the right to exclude third parties from using its subject matter”;85 and
- the characterizing part of the claims – “[a]nother common error is believing that, as the characterizing part of the claims defines the characteristics of the invention that are new to the state of the art, it is precisely this characterizing part that determines the protection granted by the patent. […] We reiterate that the scope of a claim is determined by the sum of the characteristics defined before and after the expression ‘characterized by.”’86
3.7.2.1 Compensatory damages
Articles 208–209 of the LPI provide for the possibility of full compensation for damage suffered, including property damage and loss of profits. Additionally, Article 207 provides that the injured party may file any civil action they deem necessary. Damages, however, are not restricted to the cases of Articles 208–209 because the LPI assures a patent holder all the rights arising from civil legislation. Thus, Brazilian jurists and case law also recognize the possibility of claiming damages for pain and suffering. Pain and suffering are in re ipsa, and their compensation must reflect “both the punitive function in relation to the agent and the compensatory function in relation to the victim.”87 Therefore, according to Brazilian law, potential damages correspond to what was lost (i.e., emerging damage) and what was reasonably no longer gained (i.e., loss of profits), in addition to the possibility of compensation for pain and suffering, which are punitive in nature.
Article 208 of the LPI provides that the amount of damages is determined by the benefits that the injured party would have received had the infringement not taken place. Article 210 of the LPI, by contrast, stipulates that the loss of profits is determined by one of the following criteria – whichever is most favorable to the injured party:
I – the benefits that the injured party would have received had violation not taken place; or
II – the benefits that the infringing party received; or
III – the compensation that the infringing party would have paid to the holder of the right for the grant of a license legally allowing them to exploit the subject matter.
These two provisions must be interpreted jointly, and the difficulty of proof determines which of the Article 210 criteria will be chosen by the winning patent holder in the action, considering what is most favorable given the factual circumstances. Damages may be defined in the settlement of the judgment88 or indicated in the complaint itself at the discretion of the injured party.89
3.7.2.2 Attorneys’ fees
The party in a lawsuit is also subject to paying loss-of-suit fees, which correspond to the costs (fees owed to the state for filing actions) and procedural expenses (including expert fees) that both parties have incurred, in addition to paying the opposing party’s attorneys’ fees.
Attorneys’ fees are regulated by Article 85 of the CPC and are set by the judge, in the decision, at 10 percent to 20 percent of the decision amount, the economic benefit obtained or – if this cannot be measured – the adjusted amount of the case, considering the professional’s degree of diligence, the place where the service was provided, the nature and importance of the case, and the work carried out (Article 85(2) of the CPC).