3.7 Civil remedies
3.7.1 Injunction
In Brazilian law, in order to avoid urgent and potentially harmful situations (in many such cases, the main action cannot be filed), injunctive reliefs, regulated by Articles 300–311 of the CPC, are available. In the LPI, this is specifically provided for in Article 209(1), which authorizes the granting of an injunctive relief even before the service of process to the opposing party.
Injunctive relief is granted when there is evidence of the likelihood of the right and the danger of damage or risk to the useful outcome of the case (Article 300 of the CPC). For the granting of interlocutory relief, the judge may, depending on the case, require a security interest or personal guarantee for compensating the damage that the other party may suffer. The security interest or personal guarantee may be waived if the economically disadvantaged party is unable to offer it (Article 300(1) of the CPC). Interlocutory reliefs may be granted before the final decision or after prior justification (Article 300(2) of the CPC). They may seek to anticipate the content of the final claim, but, in this case, they can only be granted when the decision’s effects are reversible (Article 300(3) of the CPC).
Interlocutory relief may be provisional, in which case it intends to ensure the useful outcome of the case. The interlocutory relief can be effected by means of an attachment, sequestration, listing of property, registration of protest against the disposition of property, or any other suitable measure to ensure the right (Article 301 of the CPC).
Regardless of the redress for procedural damage, a party is liable for the damage that the effectiveness of the interlocutory relief causes to the other party if:
I – the judgment is unfavorable to them;
II – the party fails to provide the necessary means for the service of process to defendant within 5 (five) days once the interlocutory relief has been obtained in advance;
III – the effectiveness of the measure in any legal case is ceased; [or]
IV – the judge accepts the claim of preemption or limitation of plaintiff’s claim. (Article 302 of the CPC)
The interlocutory relief may be simultaneous to the filing of the action. This is an interlocutory relief requested in advance. In this case, the complaint may be limited to the request for an interlocutory relief and to the indication of the final injunction request, showing the dispute, the right being pursued, and the danger of damage or risk to the useful result of the case (Article 303 of the CPC). If an interlocutory relief is granted:
I – the plaintiff must amend the complaint, complementing the arguments, attaching new documents, and confirming the final injunction request within 15 (fifteen) days or a longer period set by the judge [under the penalty of termination of the case without prejudice (Article 303(2) of the CPC)];
II – the defendant will be served process and notified to attend the conciliation or mediation hearing [if the judge so determines]; [and]
III – if the dispute is not resolved by the parties themselves, the term for answer will [begin]. (Article 303 of the CPC)
The interlocutory relief requested in advance becomes final if the decision granting it is not appealed (Article 304 of the CPC). In this case, the case is terminated (Article 304(1) of the CPC). Either party may request the unfiling of the case record in which this measure was granted, in order to provide evidence to the complaint of the action (Article 304(4) of the CPC).
The right to review, change or invalidate an interlocutory relief requested in advance that was not questioned and that was terminated and filed terminates after two years, counted from the moment the decision terminating the case is disclosed (Article 304(5) of the CPC). The decision granting the relief is not res judicata. However, the stability of the respective effects is only removed by a decision that reviews, changes or invalidates it, rendered in an action brought by one of the parties (Article 304(6) of the CPC).
A provisional injunction may also be requested in advance, indicating the dispute and its grounds, the right being pursued, as well as the possible damage or risk to the useful outcome of the case (Article 305 of the CPC). In this case, the defendant is served process and given five days to answer the request and indicate the evidence they intend to produce (Article 306 of the CPC). If the request is not answered, the facts alleged by the plaintiff are considered accepted by the defendant as having truly occurred, in which case the judge will make a decision on the provisional injunction within five days (Article 307 of the CPC).
Once the provisional injunction has been effected, the main request must be made by the plaintiff within 30 days. In this case, it is presented in the same case record as that in which the request for the provisional injunction was made, regardless of the advance of new procedural costs (Article 308 of the CPC). However, the provisional injunction granted in advance ceases to be effective if:
I – the plaintiff does not make the main request within the legal term;
II – the injunction is not effected within 30 (thirty) days; [or]
III – the judge dismisses the main request made by the plaintiff or dismisses the case without prejudice. (Article 309 of the CPC)
The rejection of the request for provisional injunction does not prevent the party requesting it from making the main request, nor does it influence the judgment of the latter, unless the reason for the dismissal is the recognition of preemption or limitation (Article 310 of the CPC).
Finally, there is also the possibility of granting interlocutory relief based on evidence. This is governed by Article 311 of the CPC. Such relief is granted, regardless of the demonstration of the danger of damage or risk to the useful outcome of the case, when:
I – there is an abuse of the right of defense or obvious dilatory intentions by the party;
II – the allegations can be actually evidenced only through documents and there is a theory confirmed in the trial of repeated cases or in a binding precedent;
III – it is a claim for repossession based on adequate documentary evidence of the deposit contract, in which case the order of delivery of the object under custody will be decreed, under penalty of fine; [or]
IV – the complaint is accompanied by sufficient documentary evidence of the facts constituting the plaintiff’s right to which the defendant does not present opposing evidence capable of generating reasonable doubt.
Sole Paragraph. In the cases indicated in items II and III, the judge may decide in advance. (Article 311 of the CPC)
Since the grant of interlocutory relief – whether of a provisional or anticipatory nature – requires evidence of the plausibility of the alleged facts, the judge may anticipate the production of expert evidence if the judge fears that the grant of the request may result in the risk of irreversible damage.79
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).
3.7.3 Other remedies
Articles 201–204 of the LPI specify provisional measures of search and seizure that may be requested without prejudice to any additional requests for the granting of interlocutory reliefs in the situations previously outlined. Article 201 of the LPI regulates search and seizure procedures in crimes against process invention patents. In these cases, the court officer is accompanied by an expert, who preliminarily verifies the existence of the illicit act. The judge may order the seizure of products obtained by the infringing party through the use of the patented process. This procedure may also be requested in civil actions.
If the search and seizure procedure has been carried out and the party who requested it did so in bad faith due to rivalry, mere whim or gross error, they are liable for damages (Article 204 of the LPI).
In case of industrial or commercial establishments legally organized and publicly functioning, preliminary procedures ordered by the judge are limited to the inspection and seizure of products. Such establishments’ lawfully exercised activities cannot be interrupted (Article 203 of the LPI).