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Brazil has once again secured its position among the ten largest global economies. This is partly credited to national and foreign private direct investments and project finance in high-value-added goods and services, which require legal certainty in utility patent enforcement.

The country’s current utility patent system dates back to the 1990s, specifically to 1994, when Brazil joined the Stockholm Revision of the Paris Convention and implemented the World Trade Organization (WTO) Trips Agreement.

Law #9,279 of 1996, the statute on industrial property rights and obligations, including utility patents, serves as the primary legislation for obtaining a utility patent and establishing the legal framework for exercising its rights and obligations.

While a regulatory framework is crucial, its mere existence does not suffice. Although statutes are essential for establishing a patent system, their enforcement guarantees its effectiveness. Judicial relief ultimately determines its efficacy.

The Brazilian court’s decisions in patent cases, acclaimed in the last decades, resulted from specialization efforts undertaken by the judiciary branch, which started in 1989. These efforts have significantly enhanced the effectiveness of the Brazilian patent system. These initiatives have supported the interests of local and foreign investors, facilitating access to state-of-the-art products and services for the Brazilian population[1].

The Brazilian courts have positioned the country among the select jurisdictions offering greater legal certainty for the enforcement and validity of utility patents, achieved through independent, thoughtful, and timely judicial relief.

During the speech delivered upon the enactment of Law #9,279 in 1996, (the patent statute) President Fernando Henrique Cardoso highlighted the significance of patent legislation in revitalizing Brazil's productive system.

“Let's share knowledge and transform the country, as we are doing, so it may truly become the master of its destiny.”

Nearly three decades later, the Brazilian utility patent system continues to foster research and development, productive investments, industrial growth, national production, and high-value-added employment, contributing significantly to the country's economic and social development.

Brazil lacks a specialized court exclusively dedicated to adjudicating utility patent disputes, such as the United States Court of Appeals for the Federal Circuit, Germany's Federal Patent Court, China's Intellectual Property Court of the Supreme People's Court, Japan's High Court of Intellectual Property, and, more recently, the Unified Patent Court in Europe.

In Brazil, Article 92 of the Brazilian Constitution establishes the division of Brazilian courts into independent courts devoid of hierarchical structure. Both state and federal courts play a key role in ensuring the effectiveness of legislation concerning the validity and protection of utility patents. They both contribute significantly to positioning Brazil as one of the most predictable and reasonable jurisdictions despite the relatively small number of cases compared to the magnitude of challenges the Brazilian courts face.

This minimizes the public resource expenditure required to establish specialized courts and reduces processing time. Moreover, judicial relief is commended both domestically and internationally.

During his inauguration speech as chief justice of the Brazilian Supreme Court in 2023, Chief Justice Luís Roberto Barroso declared:

“The Brazilian courts are among the most independent and productive in the world […] adjudicating approximately 30 million cases annually. We are approximately 18 thousand judges. The judiciary is likely the institution with the greatest reach nationwide.”

Data from the National Council of Justice (CNJ), released in the same year, indicates that Brazilian courts had 81,4 million ongoing cases, with 63,3 million (77,7%) in state courts and 11,8 million (14,5%) at the federal level.[2] In 2022, 31,5 million lawsuits were filed, the highest number recorded since 2009. Of these, 23 million (73%) were filed in state courts, while 4,5 million (14.3%) were filed in federal courts.[3]

Brazilian courts' approach to handling disputes regarding the validity and infringement of utility patents is consistent with their approach to any other lawsuit. The process of democratization and the enactment of the 1988 Brazilian Constitution inspired the judicial relief by the Brazilian courts, which are independent and attuned to the country's myriad and diverse needs.

The jurisdiction for lawsuits concerning utility patents establishes a "mixed bifurcated" system in Brazil. This system assigns the authority to resolve infringement disputes and compensation for damages to state courts (like US Federal Courts) while federal courts (like the US Courts of Federal Claims) handle claims related to the invalidity of utility patents granted by the Brazilian PTO.

The Federal Court also assumes jurisdiction over cases involving patent infringement and claims for damages when Federal Government agencies are accused of patent infringement. Additionally, it holds the authority to adjudicate utility patent infringement cases when these agencies express interest in any lawsuit before the state courts.[4]

Since the end of the last century, numerous courts throughout Brazil have implemented a system whereby a dedicated group of trial and/or appellate judges is responsible for handling utility patent cases (usually together with utility models, trademarks, and industrial designs). This practice reflects historical precedents where courts specialized in matters such as criminal law, public administration, and others.

Centralizing the distribution of lawsuits and appeals on utility patents to a small and consistent group of courts fosters specialization within Brazilian judges. This approach brings several advantages: enhanced training for judges and civil servants, standardized procedures, heightened predictability, legal certainty, and faster instruction and resolution of lawsuits.

History of trademarks and patents in Brazil

The Brazilian Patent and Trademark Office (BRPTO), a federal agency established in 1970 with the primary mandate of granting IP registration, is headquartered in Rio de Janeiro. Before it, the Brazilian Patent and Trademark Department (BRPTD) of the Ministry of Industry and Commerce existed until its dissolution in 1970. It was also based in Rio de Janeiro, operating under direct administration and undertaking the responsibilities that now fall under the purview of the BRPTO.

The historical context sheds light on why the Rio de Janeiro Federal Court (JFRJ) became the pioneering institution specializing some of its district courts for adjudicating utility patent cases. This development followed the issuance of Provision #15 on September 18, 2000, which mandated the exclusive allocation of IP-related cases to courts also dealing with lawsuits regarding social security rights.[5]

Four years later, the Panels of the Federal Court of Appeals for the 2^nd Circuit (TRF-2) underwent specialization with the introduction of Rule #36 on November 25, 2004[6]. This rule delineated the jurisdiction of panels specialized in criminal matters and social security to handle intellectual property cases.

The Rio de Janeiro Federal Court is not only the first institution to specialize some of its district courts for adjudicating lawsuits regarding utility patents, but it has also received the highest volume of such cases among all courts in Brazil. From the start of 2019 to the end of 2023, it handled 445 cases.[7]

The federal civil courts of the Judiciary Section of the Federal District (SJ-DF) were specialized more recently, beginning on May 12, 2022. The publication of Rule of the Presidency #17/2022 divided the federal courts' jurisdiction into thematic areas, each with exclusive jurisdiction to judge specific subject matters and concurrent jurisdiction for residual issues of a civil nature not mentioned in the rule. In this regard, IP lawsuits began to be exclusively adjudicated by the 7th and 22nd Federal Courts.

One of the motivations for the specialization of the federal civil courts within the Judiciary Section of the Federal District, as per the Rule of the Presidency, stems from the unique status of the Federal District as the national forum of the Government and an optional forum for federal agencies. Law #5,648/1970, which created the BRPTO, establishes in its 1^st article that the agency has its headquarters and might be sued in the Federal District[8]. Brazil, in this aspect, follows most countries' tradition of establishing the patent agency's headquarters in its capital[9]. However, the specialization of sections within the Federal Court of Appeals for the 1^st Circuit (TRF-1) stands out as a pioneering initiative in Brazil, being the oldest among the second degree of jurisdiction. Since the establishment of the first internal rules of the Federal Court of Appeals for the 1^st Circuit on April 27, 1989[10], a dedicated jurisdiction has been outlined for the "processing and adjudication of matters related to (...) industrial property". This responsibility was later shifted from the 2^nd to the 3^rd Section, per the Court´s internal rules ratified on December 14, 2000.[11]

In the absence of a court with exclusive jurisdiction to adjudicate invalidity and infringement lawsuits, the Brazilian Code of Civil Procedure grants the owner of a utility patent the right to initiate legal proceedings for its protection against infringement in the jurisdiction where the patent infringement occurred, even if it differs from the defendant's domicile, as provided for in Article 53, Item IV, 'a'.

This rule is not an innovation. The legislative choice was established five decades ago and included in the project sanctioned as the Brazilian Code of Civil Procedure of 1973.[12]

In the same sense is the consolidated case law, which settled that “the action for compensation for damages due to counterfeiting or unfair competition must be filed in the court of the place where the act or fact occurred.” The jurisprudential understanding set by the STJ is based on decisions, in the same sense, from the Court of Justice of São Paulo, which is the Court with the largest number of cases of infringement of utility patents.[13]

The case law from the STJ is followed by courts nationwide, contributing to the predictability and speed of decisions made by the Brazilian Judicial Branch. Other countries spend a lot of time, effort, and resources defining the jurisdiction for a patent infringement lawsuit, often compromising discovery, evidence gathering, and expert examinations.

As already mentioned, the historical context of housing the BRPTO and the BRPTD before it also converged with the specialization of the Justice of the State of Rio de Janeiro (JE-RJ), which defined the jurisdiction of the current State business trial courts to decide IP lawsuits since the publication of Rule #19, of December 19, 2001.[14]

Therefore, Rio de Janeiro State Courts have jurisdiction to adjudicate utility patent infringement cases and maintain a specialization that has endured for almost a quarter of a century, establishing it as the most longstanding among the State Courts.

Between the beginning of 2019 and the end of 2023, 41 utility patent infringement lawsuits were filed before the seven business trial courts of the state courts of Rio de Janeiro[15]. In addition to having the oldest specialization, Rio de Janeiro had judges with an average tenure of nine years and six months in business trial courts between 2019 and 2023.[16]

The current tenure of experience is eight years and three months on average per trial business court[17]. This experience is one of the contributing factors to the leadership in the productivity index of judges in the Rio de Janeiro State Court, which maintained its position among states considered "major" for the 14^th consecutive year, as per data from the National Council of Justice.[18]

Specialization in Adjudication of Patent Disputes

Other state courts have also adopted this specialization. Among the five “major” state courts, according to the National Justice Council, only Paraná lacks specialized courts with exclusive jurisdiction to judge utility patent lawsuits. However, the Paraná Court of Justice has already approved the implementation of regional business courts[19], following Recommendation #56/2019[20] of the National Justice Council.

The Rio Grande do Sul State Court created regional business trial courts in the districts of Porto Alegre, Pelotas, Passo Fundo, Caxias do Sul, and Novo Hamburgo, which have exclusive jurisdiction to decide utility patent lawsuits in accordance with rule #13/ 2022/OE.[21]

The Minas Gerais State Court determined the jurisdiction of the business trial courts of the District of Belo Horizonte to judge utility patent lawsuits based on Rule #647/2010.[22]

The São Paulo State Court created the two business and conflict trial courts related to arbitration in the District of the Capital in Rule #763/2016[23], concentrating in them the jurisdiction to decide lawsuits relating to business law, IP, unfair competition, and those arising from the Arbitration Act.

As of 2019, six regional business courts were established with the authority to adjudicate utility patent actions within the administrative judicial regions (RAJ) of the state of São Paulo. This expansion was prompted by the increasing demand for services and the favorable outcomes observed in the capital's business courts.[24]

The Private Law Section of the São Paulo Court of Appeals (TJ-SP) was established under the 1992 internal rules of the TJ-SP, which outlined its jurisdiction. Further clarification regarding its jurisdictions was provided through the combination of regulations and Rule #90/1995[25]. This rule already encompassed the adjudication of cases involving "patents, trademarks, corporate names, and acts of the Board of Trade.” However, the jurisdiction of the Private Law Section was generally focused on civil matters, lacking a specific specialization.

Subsequently, recognizing the significance of commercial relations, particularly in the realm of IP, as "special and of great importance for economic development," Rule #538/2011[26] of the São Paulo Court of Appeals instituted the Corporate Law Appellate Panel. This appellate panel, integrated into the Private Law Section, specializes in deciding appeals related to IP lawsuits.

The specialization of the São Paulo State Court is significant, as it is the largest court in the country in terms of the number of judges, ongoing trials and appeals, and new cases filed per year. According to the National Justice Council, it is also the Court with the shortest average time to render a decision on the merits in lower courts among the five “large” State Courts.[27]

In the utility patent system domain, the State of São Paulo Court of Appeals ranks second in terms of the volume of lawsuits filed between 2019 and 2023. It trails behind the Rio de Janeiro Federal Court, which handles a volume approximately three times greater. Between the beginning of 2019 and the end of 2023, 57 utility patent infringement actions were filed before the two business courts of the District of the Capital (65 including administrative judicial regions and 88 including non-specialized courts).[28]

The São Paulo Court also features experienced judges. Between 2019 and 2023, these judges were sitting at the business trial court in the District of the Capital for an average duration of five years and six months, averaging the two courts established in 2016. Alternatively, considering the six regional business courts, the average tenure per court was three years and one month.[29]

This average remains approximately three years and two months when, including judges sitting by designation at the business courts in the capital's district, responsible for 26 of the 72 decisions on requests for preliminary injunction rendered between 2019 and 2023 (36%)[30]. As of today, the tenure of experience is two years and 11 months on average per business trial court in Sao Paulo.[31]

Only the seven business trial courts in Rio de Janeiro (eight years and three months on average per court) and the two courts in Minas Gerais (eight years and eight months on average per court) have judges who have held office longer in state business trial courts.[32]

Effectiveness in the utility patent system

Praise for the Brazilian court decisions’ positive impact on the country's patent system is not restricted to judges in specialized courts or judges sitting by designation. In courts lacking specialization, as well as in superior courts (STJ and STF), there is a consistent commitment to upholding justice and fairness in a timely and predictable manner in favor of legal certainty. Recent decisions by the Brazilian Superior Court of Justice in utility patent infringement actions are good examples.

Unsurprisingly, praise for the effectiveness of our utility patent system, ensured by the Brazilian courts, isn't unanimous. Those who represent interests opposed to the resolution of conflicts in accordance with the Law are left unsatisfied.

However, any deviations or insinuations that undermine the integrity of the Brazilian court system and attempt to sow discord among independent and non-hierarchical courts cannot be tolerated or endorsed. Such actions only serve to create a favorable environment for infringers. An attack against one Court is an attack against all Brazilian Courts.

Criticizing Brazilian judges – who have been presiding over specialized courts for years, focusing on adjudicating utility patent cases – by claiming in the press that they lack specialization, do not thoroughly examine cases before making decisions, and make rulings without determining the existence of infringement and legal probability, is both deplorable and untrue.

Attacks in the media against the Brazilian courts aim to disparage our judges as they fulfill their duty to preside over courts specializing in utility patent actions. These are unfounded statements that do not align with the facts and the best efforts, both individual and institutional, of the judges and the courts. The information provided here stands as evidence in their defense.