Rio de Janeiro IP Courts solidify understanding on which issues should be considered in SEP disputes: FRAND to be assessed based on concrete and empirical evidence instead of biased models

It is not a secret that Brazil has become an important jurisdiction for SEP disputes. Over nearly 15 years, the country’s judges with jurisdiction over IP matters have been faced with cases involving SEP assertion. More recently, some SEP owners have pursued an expedited calendar for evidence-production preceding an adjudication on remedy, which usually takes the form of a preliminary injunction. Licks Attorneys, a law firm based in Rio, has represented every patent owner to litigate in Brazil since 2012 in more than 100 cases, more than 70 of them being SEP infringement lawsuits, and are the ones behind this strategy, which is aimed at balancing due process with effective and timely relief.

In recent cases, implementers have been challenging the appointment of engineers as court experts for FRAND examinations in Brazilian SEP cases, arguing that this type of examination should be conducted by professionals with proven expertise in economics. Recent developments show that the IP Courts of Rio de Janeiro have been consistently rejecting such challenges and, thus, confirming that engineer experts are qualified to carry out the examination of comparable licenses to give the court a basis for assessing whether the SEP owner made a reasonable and non-discriminatory prior offer.

By rejecting such maneuvers, the IP Courts of Rio de Janeiro ensure predictability and efficiency in Brazilian SEP litigation, reinforcing the consolidation of Brazil as a key jurisdiction for SEP owners’ interests and discarding implementers’ attempts to delay proceedings.

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  Carolina Souza