MEDIA & PUBLICATIONS

In Brazil, the protection of inventions is governed by the Brazilian Industrial Property Law (BR IP Statute), based on the Federal Constitution and supported by treaties such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) and the Paris Convention.

The BR IP Statute provides that inventions can be protected by invention and utility model patents. While invention patents cover the protection of products or processes, utility models cover the protection of an object of practical use, or part of it, whose modification results in functional improvement.

Requirements for Granting Patents

The legislation establishes the requirements for granting patents:

Invention Patent (Article 8, BR IP Statute)

The product or process may be protected by a patent if it is endowed with novelty, inventive step and industrial application.

Utility Model (Article 9, BR IP Statute)

The object of practical use, or part of it, may be protected by a utility model if it presents an inventive act, new form or disposition and industrial application.

Non-Patentable Matters (Articles 10 and 18, BR IP Statute)

The BR IP Statute also establishes what is not considered an invention or utility model and, therefore, cannot be the subject of a patent:

• scientific theories and mathematical methods;
• purely abstract concepts;
• schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature;
• literary, architectural, artistic and scientific works or any aesthetic creation;
• computer programs per se;
• the presentation of information;
• rules of games;
• operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body;
• natural living beings, in whole or in part, and biological material, including the genome or germ plasma of any natural living being, when found in nature or isolated therefrom, and natural biological processes.
• whatever is contrary to morals, good customs and public security, order and health;
• substances, matter, mixtures, elements or products of any kind, as well as the modification of their physical/chemical properties and the respective processes of obtaining or modifying them, when they result from the transformation of the atomic nucleus; and
• living beings, in whole or in part, except transgenic micro-organisms meeting the three patentability requirements - novelty, inventive step and industrial application – provided for in Article 8 and which are not mere discoveries.

The prerogative for granting patents in Brazil belongs exclusively to the Brazilian Patent and Trademark Office (BRPTO), a Federal Agency, and the procedure is governed by the Brazilian Industrial Property Statute and regulated by the Guidelines issued by the Agency.

Any individual or legal entity may file an application for a patent or utility model with the BRPTO, which conducts the administrative process for the examination of the presence of patentability requirements.

Average Length of the Procedure to Obtain a Patent

In the last two years, the BRPTO has taken an average of five years and ten months to issue the final decision in a patent application proceeding.

Alongside the ongoing programmes to address the backlog, the BRPTO offers fast-track options, which include Patent Prosecution Highway programmes with the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), and other foreign offices.

Representation

According to Article 216 of the BR IP Statute, a patent application can be filed before the BRPTO by the party or by their attorneys. The Statute provides a specific requirement for those who are domiciled abroad: to maintain permanently a duly qualified attorney resident in the country, with powers to represent the applicant administratively and judicially, including to receive summons (Article 217, BR IP Statute).

Fees

The BRPTO regularly updates its official fees. For the 2026 calendar, the BRPTO’s fees are as follows (considering an exchange rate of approximately USD1 = BRL6):

• Patent application fees:
  1. USD44 for filing a patent application (invention or utility model);
  2. USD145 for requesting examination of an invention patent application (up to ten claims, with additional fees for each block of 15 claims); and
  3. USD94 for requesting examination of a utility model patent.

• Patent annuity fees:

• 1. For an invention patent (within the term):
     1. pending application – approximately USD67; and
     2. granted patent – between USD167 and USD467, depending on the patent’s age.
  2. For a utility model:

• 1. 1. pending application – approximately USD40;
     2. granted patent – between USD100 and USD220, depending on the patent’s age.

The BR IP Statute establishes, in its Article 40, that patents have a term of 20 years, while utility models have a term of 15 years, both counted from the date of filing of the application with the BRPTO.

After the declaration of unconstitutionality of the sole paragraph of Article 40 of the BR IP Statute by the Federal Supreme Court, in 2021, the courts began to receive lawsuits requesting the adjustment of the final term of validity of patents affected by the change promoted by the judgment, but the courts have not yet consolidated a uniform understanding. The issue is also being debated in the Legislative Branch, where bills are being processed aiming to amend the BR IP Statute to establish requirements for the adjustment of the term of validity of patents (as is the case with PL No 1471/2023).

The BR IP Statute foresees that a patent grants its holder the following rights:

• to prevent unauthorised acts, such as such as manufacturing, using, offering for sale, marketing, importing, stockpiling, receiving and/or hiding a patented product or a patented process;
• to prevent third parties from contributing to the practice by other parties of the aforementioned acts;
• to receive compensation for the damages occurred due to the violation of the two previously stated rights;
• to license the patent’s right of use and to transfer the ownership of the patent.

In its turn, the patent-holder must pay the annual fees and explore the patent subject matter in Brazilian territory, under the risk of extinction and the granting of a compulsory licence.

The patent-holder may file an infringement lawsuit with an injunction request to cease or prevent acts of infringement. Under the BR Code of Civil Procedure and the BR IP Statute, an injunction may be granted in a preliminary or permanent manner.

Finally, patent-holders are not obliged to provide public information, such as patent listings, for specific products or processes, even though they can do so at their own convenience.

Once the term of validity conferred by the BR IP Statute (20 years for patents and 15 years for utility models) expires, there is no additional protection available, and the invention becomes part of the public domain.

The BR IP Statute allows the participation of third parties in the administrative process of patent applications and the administrative and judicial questioning of the fulfilment of the patentability requirements of the patent itself.

The law provides for the exercise of these faculties in three instances:

• after the publication of the patent application and before the end of the examination of the patent application, any interested third party may submit documents and information relevant to the analysis of the content of the patent application by the BRPTO (Article 31 of the BR IP Statute);
• within 60 days, counted from the granting of the patent, any interested third party may request the initiation of an administrative nullity proceeding before the BRPTO (Article 231 of the BR IP Statute); and
• at any time during the term of 20 years of the patent's validity, any interested third party may file an invalidity lawsuit before the Federal Court (Article 51 of the BR IP Statute).

The administrative decision rejecting the patent application may be challenged by appeal addressed to the Commissioner of the BRPTO. Pursuant to Article 212 of the BR IP Statute, the appeal must be filed within 60 days from the publication of the rejection decision and will be considered by the Commissioner of the BRPTO.

Furthermore, with the closure of the administrative instance, the interested party is left to question the administrative decision by filing an invalidity lawsuit of the administrative act before the Federal Court. It is worth noting that, in Brazil, the administered party has a period of five years to question, in court, any administrative act, under the terms of Article 1, Decree No 20,910/1932.

The consequence of the failure to pay the annual fee for the patent application is the filing, while the failure to pay the patent fee results in its extinction, by virtue of Article 86 of the BR IP Statute.

The filing or extinction provided for in Article 86 must be preceded by notification to the applicant or holder, who may, within a period of three months from the notification of filing of the application or extinction of the patent, pay a specific fee to promote the restoration of the application or patent (Article 87 of the BR IP Statute).

The obligation to pay the annual remuneration is supported by Article 84, paragraph 2, of the BR IP Statute, which establishes that the payment must be made in the first three months of each annual period, and may be made within the subsequent six months, subject to the payment of additional remuneration.

After the granting of a patent, it is possible for the claims to be reviewed by the BRPTO in the so-called post-grant opposition proceeding.

This proceeding can be instituted ex officio by the BRPTO or at the request of any person with legitimate interest, within six months from the grant of the patent, as per Article 51 of the BR IP Statute.

The patent-holder is notified to respond to the post-grant opposition within 60 days, after which the BRPTO will issue an opinion, to which the patent-holder and the applicant will have 60 days to respond. Once this period has passed, the proceeding is decided by the Commissioner of the BRPTO, who can conclude for the invalidity of the patent in view of the fact that:

• any of the legal requisites have not been met;
• the specification and the claims do not meet the provisions of Articles 24 and 25, respectively;
• the subject of protection of the patent extends beyond the contents of the application as originally filed; or
• any of the essential formalities indispensable for grant were omitted during prosecution.

It is worth noting that the effects of the patent are not suspended during the post-grant opposition proceeding, thus the patent-holder can enforce its IP rights while waiting for the final decision.

The most relevant remedies available in Brazil are preliminary and permanent injunctions. The Brazilian legal system offers patent and trade-secret owners the opportunity to request injunctive relief to cease and prevent infringement. Preliminary injunctions are widely available and fast in Brazil, and the requirements are:

• the likelihood of success;
• danger of irreparable harm if the injunction is not granted; and
• balance of hardships.

They may be issued ex parte, that is, before the defendant is served and able to submit arguments.

Injunction Suspension

Additionally, Brazilian law allows the Public Prosecutor’s Office or an interested Public Entity to request that the Chief Justice of the Supreme Court of Justice, if there is a constitutional law issue, or the Chief Justice of the Superior Court of Justice, if there is a federal law issue, stay the effects of a preliminary injunction that may cause harm to the public order, to the health, to the security and to the public economy.

Damages and Attorney Fees

In Brazil, damages are awarded in a compensatory manner, in which the plaintiff is entitled to actual losses and lost profits. There are no punitive or treble damages for wilful infringement, nor any kind of enhanced damages. Each party pays its own counsel, and any expenses are not reimbursed by the party who loses the lawsuit. The winning party is also entitled to a very limited amount for attorney-success fees and the reimbursement of court-related fees.

Criminal Prosecution and Consequences

In Brazil, both patent infringement and trade-secret violation are also criminal offences, but criminal proceedings involving patent and trade secrets are rare. One possible explanation is that the penalties set by the BR IP Statute are low and range from one month to one year of imprisonment or a fine, which is suspended for first offenders.

In Brazil, there are a few remedies at the disposal of third parties who wish to remove the effects of a technical intellectual property right.

Administrative Level

• Filing of document and information for aiding examination between the publication of the application and the termination of examination, as per Article 31 of the BR IP Statute; and
• Filing of a post-grant opposition proceeding within six months from the granting of a patent.

Judicial Level

• Filing of an invalidity lawsuit at any time during the term of the patent. This lawsuit must be filed before a federal trial court and the BRPTO’s participation is mandatory, according to Articles 56 and 57 of the BR IP Statute. In this case, the BRPTO is free to issue its opinion on the validity of the granted claims or side with the plaintiff on the total or partial invalidity of the claims, reviewing the opinion issued at the end of the patent application examination. Furthermore, it is possible for a party accused of patent infringement to argue the invalidity of said patent as a matter of defence, as per Article 56, paragraph 1, of the BR IP Statute.

• Filing of a declaratory judgment of non-infringement. This lawsuit must be filed before a state trial court and usually mimics the proceeding of an infringement lawsuit. This is because the parties’ allegations of infringement or non-infringement are usually reinforced by expert reports issued by professors of renowned universities and the final decision on the merits takes into account the conclusions of the expert examination.

At Both Administrative and Judicial Level

• Granting of a compulsory licence if the patent-holder exercises the rights resulting therefrom in an abusive manner or by means of it practises abuse of economic power that is proven under the terms of the law by an administrative or court decision (Article 68 of the BR IP Statute).
• The BR IP Statute provides for conduct that may result in a compulsory licence:
  1. the non-exploitation of the subject-matter of the patent in the territory of Brazil, by lack of manufacture or incomplete manufacture of the product or, furthermore, by lack of complete use of a patented process, except in the case of non-exploitation due to economic unviability, when importation will be admitted;

• 1. commercialisation that does not meet the needs of the market;
  2. national emergency or public interest;
  3. a situation of dependency of one patent on another is characterised;
  4. the subject-matter of the dependent patent constitutes a substantial technical advance in relation to the earlier patent; and
  5. the patent-holder does not come to an agreement with the patentee of the dependent patent for the exploitation of the earlier patent.

Brazil Is a Civil Law Country

Contrary to the US, Brazil is a civil law country, thus the authority of court precedents is limited, usually carrying only persuasive weight. The most relevant laws providing for intellectual property protection are the Federal Constitution, the BR IP Statute (Law No 9,279/1996), the TRIPS Agreement, the Paris Convention for the Protection of Industrial Property, the Copyrights Law (Law No 9,610/1998) and Software Law (Law No 9,609/1998).

Moreover, all civil cases in Brazil are tried solely by a judge. There is no trial by jury in civil court and, even in criminal cases, a trial by jury will only be held in the case of wilful criminal acts against life, such as murder or incitement to suicide. A jury is never used in cases regarding intellectual property.

Bifurcated Judicial System for IP Litigation

Like Germany, Brazil adopts a bifurcated system, in which infringement lawsuits are heard by state courts, whereas invalidity lawsuits are discussed before federal judges. Both state and federal courts hold trial and appellate levels.

In Brazil, there 27 state courts of appeals (one for the Federal District and one for each of the 26 states) and six federal courts of appeals (one for each specific group of states by region).

The BR IP Statute states that the BRPTO must participate in invalidity lawsuits, and the Agency can either defend the title or side with the plaintiff. Moreover, the Constitution and the Code of Civil Procedure determine that lawsuits involving federal agencies, such as the BRPTO, fall under federal jurisdiction.

Briefly put:

• at trial level, matters are held by federal and state courts;
• at appellate level, matters are held by federal and state courts of appeals; and
• at superior courts, issues of federal law are held by the Superior Court of Justice (STJ) and issues of constitutional law are held by the Supreme Court (STF).

Brazilian civil procedure has made efforts to adopt, whenever possible, alternative means of conflict resolution, encouraging judges, lawyers and parties to opt for the consensual route, and has been successful in many areas. Unfortunately, IP is not yet one of them and there is no body specialised in the amicable resolution of disputes involving intellectual property in Brazilian courts.

The closest to this is the Centre for Dispute Resolution, Mediation and Arbitration in Intellectual Property (CSD), a body belonging to the Brazilian Association of Intellectual Property (ABPI), which focuses its performance on the control and management of alternative dispute resolution procedures, including those related to Internet Domain Names, alongside Mediation, Arbitration, Determination by Expert(s) and Online Dispute Resolution System (ODR).

Neither the Brazilian Code of Civil Procedure nor the BR IP Statute establishes prerequisites to filing a lawsuit, there being no need to attest the issuance of a formal demand letter or prior engagement in negotiations.

Despite that,  the demonstration of the issuance of a cease-and-desist letter prior to the filing of an infringement lawsuit, which can also be relevant for future damages claims, can be seen as a sign of good faith by the court.

In Brazil, the parties to legal proceedings involving intellectual property rights must be represented by lawyers regularly registered with the Brazilian Bar Association, by virtue of Article 103 of the Code of Civil Procedure. This rule is applicable to individuals and legal entities domiciled, or not, in Brazil.

The Code of Civil Procedure requires, in addition to representation by a lawyer, the provision of a sufficient bond for the payment of the costs and attorney's fees of the opposing party, in the event that the party does not reside in Brazil and does not have sufficient real estate in the country to ensure such a payment (Article 83 of the CPC). It is important to note that such a requirement may be waived in some cases, for example, if there is an international agreement or treaty providing for it and to which Brazil is a party.

The Brazilian Code of Civil Procedure and the BR IP Statute permit the granting of interim injunctions, even ex parte, conditioned to the demonstration of:

• the likelihood of success of their claims;
• the risk of irreparable harm; and
• that the balance of hardships favours the plaintiff (Article 300 of the CPC, and Article 209 of the BR IP Statute).

To demonstrate the likelihood of its arguments, plaintiffs usually submit technical opinions issued by renowned professors from scientific institutions/universities. Interim injunctions are usually granted under the penalty of a fine for the defendant.

Apart from the gathering of evidence of non-infringement, the fastest ways for a potential defendant to protect itself in an infringement lawsuit are to challenge the preliminary injunction decision and/or to request that the trial judge order the plaintiff to post a bond as a requirement for the granting of an injunction.

Other more strenuous options consist of the filing of a patent invalidity lawsuit before the federal court and/or the filing of a non-infringement lawsuit before the state court. The former option admits a preliminary request to stay the effects of the alleged infringed patent, although this so-called battle of injunctions has yet to be settled by Brazilian courts.

Deadline

The statute of limitations to collect damages for patent infringement is five years, as per Article 225 of the BR IP Statute.

Trigger

There is no statutory or binding decision addressing what triggers the five-year statute of limitations. Local scholars and courts usually adopt three lines of reasoning:

• The term is triggered when the patent-owner becomes aware of the infringement.
• The term is retriggered in each act of infringement.
• The term is triggered when the patent lapses.

Awardable Period

Local scholars and courts also examine the duration of the period that justifies an award of damages. There are two predominant views regarding the awardability of damages: they can be awarded if the acts of infringement are committed:

• within five years prior to the filing of the complaint; or
• since the publication of the application in the BRPTO’s Official Gazette or from when the potential infringer is made aware of the patent application before its publishing.

Although Brazilian procedural rules do not support any US-like discovery procedure, the Brazilian Code of Civil Procedure provides mechanisms to obtain relevant information from the other party either before or after formal proceedings have begun. There are two scenarios in which these mechanisms are most commonly used.

• Enforcement of injunctions. If a defendant fails to comply with a court order, the patent-owner may request additional measures to enforce the decision. While the Code of Civil Procedure does not specify a list of such measures, plaintiffs typically request that:

• 1. the court impose a fine for non-compliance or, if a fine was already set with the injunction, to increase its value;
  2. the court order the defendant to deposit the accrued fine;
  3. the court notify public authorities, retailers, and consumers about the injunction; and
  4. the court authorise the search and seizure of infringing goods on the defendant's premises or those of their clients.

• Preparation for a criminal lawsuit. Prior to filing the criminal complaint against the natural persons responsible for the infringement, patent-owners must initiate a search and seizure proceeding to produce evidence of the crime. Samples of the infringing products and machinery may be sealed and examined by court-appointed experts. Manufacturing processes may also be inspected to assess infringement. The examination is conducted by two court-appointed experts, who will submit a report based on the inspection.

There are no special provisions for lawsuits in intellectual property proceedings that differ from non-intellectual property proceedings, since they follow the same standards applied to any other civil litigation.

As for evidence particularities, it is a common practice for patent-holders to present robust evidence of infringement alongside the complaint to strengthen the likelihood of a decision granting a preliminary injunction request.

This logic is not as strong when talking about invalidity lawsuits, since federal trial judges tend to wait until after the expert examination to render a decision to stay the effects of a patent. In both cases, however, it is customary for both the plaintiff and the defendant to submit technical opinions issued by professors from renowned universities analysing the infringement or the invalidity of a patent.

The Brazilian procedural rules allow representative or collective actions, such as class actions, for intellectual property rights to seek payment for moral and material damages caused to the public as a whole or to the honour or dignity of a racial, ethnic or religious group (pursuant to Law No 7,347/1985). These lawsuits can be filed either by public prosecutors or by a public group that proves the presence of protection for the object of the action in its institutional purposes.

Although the filing of such lawsuits by public prosecutors is not common, there is an increasing tendency by Brazilian Intellectual Property Associations to take matters regarding interpretation of the BR IP Statute, decisions issued by the BRPTO and even the BRPTO’s financial autonomy to court.

The BR IP Statute provides for exceptions to patent infringement in articles 43 and 45. In these situations, a person that practises any of the activities set as infringement would not be held liable.

• Private and non-commercial use. If an act that would qualify as infringement is practised:

• 1. in private;
  2. in a non-commercial manner; and
  3. does not harm the patent-owner, that act does not constitute infringement.

• Experimental use. Activities for experimental purposes, in connection with scientific or technological studies or research, do not qualify as infringement. However, there are no clear limits in Brazil for the experimental-use exception, especially concerning uses with clear commercial purposes, and courts may adopt a wider or a more restrict interpretation thereof. In any case, the experimental-use exception will only be applicable when the patented product and/or process is the subject of the research. The exception is not applicable to cases where the patented product and/or process is used as a means to the R&D of other products and processes.
• Preparation of prescribed drugs for individual use. This exception allows the preparation of drugs by compounding pharmacies for individual use, as well as the prescription of drugs by doctors.
• Exhaustion of patent rights. Once the patent-owner has marketed a patented product or has authorised its marketing in Brazil, they cannot limit the use or marketing of the product by third parties. This exception does not cover the use of patented processes.
• Non-commercial use of a patented living subject-matter to obtain variations. The use of a patented living subject-matter is not considered infringement if it:

• 1. has no commercial use; and
  2. it is used to obtain variations or propagation to obtain other products.

• Use or sale of patented living subject-matter that does not compete with the patent-owner. In the event that the use of a patented living subject-matter is commercial, the act would not qualify as infringement if:

• 1. the product has been marketed by the patent-owner or a licensee; and
  2. the propagation has no commercial use.

• Bolar exception. Activities seeking to obtain marketing approval, in Brazil or abroad, of a patented product do not constitute infringement, if:

• 1. the activities aim to produce information, data and test results; and
  2. the marketing of the product starts after the lapse of the patent.

• Prior user rights. The user of a patented technology in good faith before the priority or filing date of that patent is allowed to continue the use in the previous form and conditions. Brazilian courts do not provide clear guidelines for the prior-use exception, and the acceptance thereof would depend on the facts of the case.

As a rule, the plaintiff in the infringement lawsuit is the patent-holder, whereas the defendant, as an individual or a legal entity, is the alleged infringer.

Additionally, an exclusive or non-exclusive licensee has standing to request the granting of an inhibitory order, and to seek the payment of damages due to the infringement of the licensed patent, only if the licence agreement foresees it and is recorded by the BRPTO.

Direct Infringement

As provided for in Articles 42 and 184 of the BR IP Statute, direct infringement occurs when a party directly:

• manufactures;
• uses;
• offers for sale;
• markets;
• imports;
• stockpiles;
• receives; and/or
• hides,

without proper authorisation, any patented product, patented process or product directly obtained by a patented process. There is direct infringement only if all the claims of the patent are being implemented by a party.

Indirect Infringement

Indirect infringement, in turn, occurs when third parties contribute or induce the acts of direct infringement.

Contributory infringement is specifically contemplated by BR IP Statute at Article 42, paragraph one, which notes that the patent-holder can hinder third parties from contributing to acts of infringement of others.

The criminal section of the patent law carries a specific provision (Article 185) according to which the act of supplying components used in the manufacture of a patented product or materials used in a patented process is also a criminal offence. The provision limits the crime to the situations where the sole use of the component is to infringe the patent. Local commentators dissent on whether the supplier must have actual knowledge that the contribution will lead to the infringement of a patent.

Although patent infringement is considered a crime under Brazilian law, criminal lawsuits involving patent infringement are rare. The penalties prescribed are low and range from three months to a maximum of one year of imprisonment or a fine. The short maximum jail time allows that the penalty be replaced by alternative non-custodial sanctions, such as fines, asset seizures and community service.

Available Remedies

Nevertheless, for both direct and indirect infringement, the patent-holder has at their disposal the option to file an infringement lawsuit as well as a criminal lawsuit (which can be done through two distinct and legal processes, ie, a preparatory search and seizure and a criminal complaint per se).

A patent granted by the BRPTO is protected throughout the Brazilian territory, giving its holder the right to prevent third parties from manufacturing, using, offering for sale, marketing, importing, stockpiling, receiving and/or hiding without proper authorisation, any patented product, patented process or product directly obtained by a patented process.

In Brazilian infringement lawsuits, the BR IP Statute imposes on the party accused of infringing a patent proceeding the burden of proving that its proceeding does not infringe the patent that is the subject of the infringing action (Article 42, paragraph 2º of the BR IP Statute).

As per Article 41 of the BR IP Statute, the extension of the protection conferred by a patent will be determined by the content of the claims as granted by the BRPTO, interpreted in the light of the specification and drawings.

There are several possible defences that someone accused of patent infringement can make use of, for instance:

• Product and/or process accused of infringement is not covered by the claims;
• Patent invalidity, which can be raised through the filing of an independent invalidity lawsuit or as a matter of defence (Article 56, paragraph 1º of the BR IP Statute);
• Prosecution history estoppel;
• Defence against the triple-identity test;
• Prior-use rights;
• Experimental use;
• Failure of the obligation to present and offer fair, reasonable and non-discriminatory licence terms.

The experts are unbiased court auxiliaries appointed by the Judges to analyse the technical aspects of the case and issue an opinion (Article 156 of the CPC). However, not only can they be consensually appointed by the parties (Article 471 of the CPC), but there is the possibility of the appointment of more than one unbiased expert, when dealing with complex expert examinations embracing more than one field of expertise (Article 475 of the CPC).

The parties must appoint technical assistants, who will work with the court expert. Moreover, the parties may submit questions to the expert and comment on the technical report. Although not mandatory, a hearing to initiate the examination is possible, with the participation of the parties, their technical assistants, and the court-appointed expert.

Under Brazilian law, “the judge is not bound to the expert report”, but the expert conclusions are most often followed by the court.

There is no separate procedure for construing the terms of the patent’s claims according to the BR IP Statute.

As seen in 3.4 Scope of Protection for an Intellectual Property Right, the extent of patent protection is defined by the wording of the claims, which must be interpreted in light of the specification and drawings, as per Article 41 of the BR IP Statute.

When it comes to the construing of claims’ wording, the BRPTO’s Examination Guidelines establishes that claims must be drafted using the connector “characterised by.” All features set forth after “characterised by” fall within the scope of the claimed invention. Any doubts concerning a term used following this expression shall be cleared by the patent specification to interpret the scope of protection accurately.

The Brazilian Code of Civil Procedure allows third parties to participate in patent-related lawsuits as amici curiae, considering the relevance of the matter, the specificity of the subject-matter of the lawsuit or the social repercussion of the controversy.

As a rule, this participation ensures the third party’s right to submit opinions and expert reports, without, however, granting the right to challenge court decisions. Either way, the judge has to define the powers of the amicus curiae in the decision that requests or allows the intervention.

Under Brazilian law, a patent may be revoked or cancelled if it was granted in violation of the provisions of the BR IP Statute. Typical grounds include lack of novelty, inventive step or industrial application, as well as insufficient disclosure or failure to comply with other statutory patentability requirements.

There are two main mechanisms to challenge the validity of a granted patent:

• an administrative post-grant opposition may be filed before the BRPTO within six months from the grant of the patent; and
• also, patent validity may be challenged through an invalidity lawsuit before the federal courts and may be filed at any time during the patent term (see 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property).

Additionally, invalidity may also be raised incidentally as a defence in infringement proceedings, although such analysis produces effects only between the parties to the dispute.

Article 47 of the BR IP Statute expressly allows for partial revocation or cancellation of a patent. Invalidity may affect all or only part of the patent claims. In cases of partial invalidity, however, the remaining claims must independently satisfy all statutory patentability requirements, allowing the patent to survive in a more limited form.

Patents may survive such proceedings with a narrowed or amended set of claims, provided that the amendments do not broaden the scope of protection and are strictly limited to addressing the validity objections raised. Any surviving claims must remain fully compliant with the requirements of the BR IP Statute.

As a rule, revocation or cancellation and infringement are not heard together in Brazil (see 2.3 Courts with Jurisdiction [AA1.1]). Invalidity may be raised incidentally as a defence in infringement proceedings (see 4.1 Reasons and Remedies for Revocation/Cancellation), in which case validity is assessed only for inter partes purposes. In practice, separate invalidity lawsuits tend to take longer to reach a final decision than infringement cases.

Brazilian patent litigation is governed by the BR Code of Civil Procedure, supplemented by specific provisions of the BR IP Statute. Depending on the court and the complexity of the matter, technical hearings and trial hearings may take place, particularly in infringement cases. Witnesses to facts are relatively uncommon, while technical evidence plays a central role.

Courts typically appoint an independent and unbiased expert to assist with technical issues, especially claim construction and infringement analysis. The parties may appoint their own technical assistants to participate in the expert examination and submit opinions, but only the court-appointed expert may be subject to cross-examination.

• As a rule, remedies on the merits and liability are decided first, while damages are usually determined at a later stage, following a separate liquidation phase after the final decision on infringement.

Some of the specific provisions of the BR IP Statute are highlighted as follows:

• A judge may grant an injunction suspending the effects of a patent if the relevant procedural requirements are fulfilled (Article 56, paragraph 2, of the BR IP Statute).
• Even if the BRPTO is not the plaintiff, it must participate in the proceedings as a mandatory defendant. It may even agree with the plaintiff's invalidity claim (Article 57 of the BR IP Statute).
• The patent-owner is granted a 60-day period to respond an invalidity lawsuit, as opposed to the usual 15-day (Article 57, paragraph 1 of the BR IP Statute).

In trial courts, patent cases are decided by a judge from the bench, either in state courts (infringement) or federal courts (invalidity) (see 2.3 Courts with Jurisdiction).

At the appellate level, cases are decided by a panel of judges, typically composed of three members, who render a collective decision following a hearing. Appellate courts may reassess both legal and factual aspects of the case, including the trial court’s evaluation of technical evidence.

Judges are not required to have a technical or scientific background. For this reason, courts rely heavily on independent, court-appointed experts to address technical issues. The court-appointed expert plays a central role in informing the judge's decision, which remains strictly judicial.

The parties have no influence over the selection or appointment of judges. Judicial independence and impartiality are ensured by statutory rules governing conflicts of interest and recusal, and by the career-based system through which judges are appointed and promoted within the Brazilian judiciary.

The parties involved in a patent dispute are free to settle it at any stage of the proceedings. These settlements can be reached privately between the parties or conducted before the court. Brazilian civil procedure also encourages consensual resolutions, enabling judges to promote conciliation or mediation at any stage of the proceedings if a settlement appears feasible.

Depending on the parties’ agreement and the nature of the resolution reached, settlements may result in dismissal with or without prejudice.

In Brazil, infringement and invalidity proceedings may run in parallel. There is no automatic stay of infringement lawsuits pending the outcome of an invalidity lawsuit in the federal courts. Infringement proceedings generally move forward independently.

Although a stay may be requested by the parties involved or ordered by the judge in exceptional circumstances, this is not the standard approach. Jurisdictional challenges and procedural strategies may arise when parallel proceedings are filed. In practice, however, infringement cases are often decided first in the venue where they were initially brought, which often leads to a race to the courts.

Given the strong emphasis on access to justice in Brazilian law, the constitutional mechanisms for defending Brazilian sovereignty, although not uncommon, tend to have no influence on Brazilian court proceedings.

Injunctions are expressly provided under the BR IP Statute and are frequently granted on an urgent basis, often at early stages of the proceedings. In practice, courts may conduct an expedited review of the asserted patent’s merits before ruling on injunctive relief, particularly in cases involving technical complexity or significant market impact.

In addition to injunctions, patentees may seek search and seizure measures and other coercive orders aimed at promptly stopping infringing conduct. Remedies may only be granted upon request of the interested party, but judges retain broad discretion in shaping and enforcing such measures to ensure their effectiveness.

Patentees are entitled to claim past damages arising from infringement, but Brazilian law does not provide for enhanced or punitive damages, even in cases of wilful infringement. To safeguard the effectiveness of future damage awards, courts may order provisional measures, such as periodic deposits into court-managed accounts or the posting of a bond by the defendant.

Enforcement of remedies is usually ensured through sanctions for non-compliance, most commonly daily fines. Depending on the circumstances, courts may also adopt more stringent enforcement mechanisms, including escalating fines, personal liability of company officers in cases of continued non-compliance, and, in specific situations, fines calculated based on the infringer’s revenues, particularly for companies operating through digital or online platforms.

Attorneys’ fees are generally awarded to the prevailing party and borne by the defeated party.