A Brief Analysis of Infringement by Equivalence in Brazil

by Marc Hargen Ehlers

April 19, 2013


Dear IP Friends,

Firstly, it is a pleasure to submit this article as a contribution to those who attended the intellectual property training courses sponsored by the JPO and APIC.

The subject matter of this short article is related to the fact that during the patent specialists course I was able to acquire a better overview on how infringement by equivalence is applied in other countries, mainly, in Japan.

As it is known by professionals in the patent field, infringement by equivalence may, in theory, be argued by the patentee whenever a third party reproduces an object that has some differences from the claimed subject matter from a literal standpoint, but still reproduces the concept of the patented invention. In this case, a complex analysis must be conducted in order to determine whether these differences fall within the concept of the invention, and, consequently, determine if non literal infringement exists.

Infringement by equivalence may be determined by different criteria, as for example, the tripartite test that is mostly used in the United States, or even the obvious equivalent from the German practice. Even in countries which legislation does not expressly provide for infringement by equivalence, e.g. Japan, this type of non literal infringement may be applied, as in the famous decision of the Supreme Court of Japan in the ball spline case (Feb. 24, 1998) (Hensei 6(o) 1083, of 1994) (Page 17, Casebook of Intellectual Property Rights (2); Japan Patent Office).

In Brazil, on the other hand, infringement by equivalence is expressly provided in the Industrial Property Law-aw nr. 9279, as follows: "Article 186-The crimes of this Chapter are committed even if the violation does not affect all the claims of the patent or if it is restricted to the use of means equivalent to the subject matter of the patent."

 Accordingly, in order to demonstrate non literal infringement in Brazil, it is necessary to evidence that the means or process used by the alleged infringer is equivalent to the patented subject matter. Based on the contents of article 186, in principle it would not be necessary to compare each particular element or step defined in the claim with the respective element or step in the infringing device or method, but only the whole invention with the infringing product or process. In other words, even if a specific feature defined in a claim is totally omitted from an infringing product, but this product can still be regarded as an overall equivalent to the patented product, the equivalence might be argued. Nevertheless, in our opinion equivalence should be preferably established on an element-by-element basis rather than by an overall comparison.

 In view of this "broad" definition for equivalence in the Brazilian IP law, Brazilian Courts have been applying this concept in a broad way and rarely indicates the term "equivalent" in the rationales of their decisions. However, there are a few decisions where the Courts have applied the doctrine of equivalents and expressly indicated the criteria used to conclude in favor of non literal infringement. As indicated below, the Court of Appeals of the state of São Paulo has applied the "tripartite test", in order to evidence the patent infringement by equivalence in appeal no. AC 994.09.338262-3: "the product of the plaintiff infringes the characteristic point 1 of independent claim 1 of patent nr. PI9914639-8 of the defendant SEB S/A by equivalence, since the rounded edges of the tightening and/or support surfaces (blades) perform "substantially the same function, substantially in the same way and produce substantially the same result of the element defined in the claim" 1.

Moreover, it is important to draw attention to the fact that, in general, Brazilian Courts have been adopting a pro-patentee position when there are "insubstantial differences" between the claimed invention and the infringing device or process. In these cases, the Courts have been considering that there is patent infringement. A possible restriction to the application of the concept of infringement by equivalence relies in consideration of the prosecution istory of the case.

Regarding prosecution history "estoppel", it is interesting to notice that despite of the use of this concept by the Courts, the Industrial Property Law does not contain specific provisions related to this restriction in claim construction. In fact, the Courts have been applying a general legal concept called Venire Contra Factum Proprium, which, in a nutshell, provides that parties cannot take contradictory courses during prosecutions either in the PTO or the Courts. Therefore, patentees could not at one side bring arguments to have his patent granted, and, thereafter, enforce his rights with arguments in the opposite direction of his previous arguments to affirm that the scope of protection of the patent must be interpreted in a broader way. In this regard, the Courts have issued an opinion, as indicated below (corresponding number unavailable):"limitation to the doctrine of the equivalents that prevents the patentee from arguing that an element of the product or process accused of infringement is equivalent to an element of the claims when, during the administrative proceeding of the patent application, the applicant limited his claim in order to override a cited prior art that covered the essential element of the accused product or process" 2

Hence, before starting a patent litigation, it is very important to review the prosecution history of the patents involved and to carefully analyze the potential infringing product in order to check for possible inconsistency issues that might jeopardize the case.

 The same procedure should be taken before launching new products or using new processes in Brazil.  In view of the above, it is concluded that infringement by equivalence is applicable in Brazil, as expressly provided by the Brazilian IP law and also based on case law, although there is still insufficient jurisprudence available with respect to the acceptable criteria for determining equivalence.


 1 Original version in Portuguese of appeal no. AC 994.09.338262-3: "o produto da autora reconvinda infringe o ponto característico 1 da reivindicação independente 1 da patente n. PI 9914639-8 de titularidade da co-Ré reconvinte SEB S/A, por equivalência, uma vez que as bordas arredondadas das superfícies de aperto e/ou apoio (lâminas) realizam" substancialmente a mesma função, substancialmente da mesma forma produzem substancialmente o mesmo resultado que o elemento expresso na reivindicação".

 2 Original version in Portuguese of (corresponding number unavailable): "limitação à doutrina dos equivalentes, que previne o titular da patente contra alegar que um elemento do produto ou processo acusado de infração é "equivalente" a um elemento das reivindicações quando, durante o processamento administrativo de obtenção da patente ele restringiu sua reivindicação para evitar uma técnica anterior citada que cobria o elemento crucial do produto ou processo acusados".

Marc Hargen Ehlers



Marc Hargen Ehlers

Partner, Lawyer, Mechanical Engineer, Industrial Property Agent

A mechanical engineer, lawyer, industrial property agent and partner at the Dannemann Siemsen firm, Marc holds a po[...]

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