In a new decision, the STJ upholds the view that it is possible to plead incidental nullity in patent and industrial design infringement actions

In a new decision, the STJ upholds the view that it is possible to plead incidental nullity in patent and industrial design infringement actions

On June 12, the 2nd Section of the Superior Court of Justice (STJ) unanimously reaffirmed its understanding that it recognizes the possibility of arguing the invalidity of patents and industrial designs as a matter of defense. The case in question involved an action for refraining from using an industrial design, in which the court of origin held that it would not be possible, in the context of an infringement action, to examine the invalidity of industrial designs, which should, in theory, be argued in a separate action, before the Federal Court.

The issue had already been analyzed by the court in 2020, when the 3rd Panel of the STJ decided, within the scope of REsp 1.843.507/SP, that although the law 9279/1996,  Brazilian Industrial Property Law (BIPL), in its arts. 57, 118 and 175, determines that actions for the invalidity of patents, industrial designs and trademarks must be filed with the Federal Court, it should not be forgotten that there is an express reservation in its text regarding patents and industrial designs, in the sense of authorizing the defendant to invoke invalidity, in an infringement action, as a matter of defense, without the need for the INPI to participate in the lawsuit (art. 56, § 1 of the BIPL).

From this perspective, the previous ruling also established that the recognition of the invalidity of patents and industrial designs by the state court, as it only occurs “incidenter tantum” (in the context of an incidental analysis), does not become res judicata and does not have effects outside the process, but only has the effect of leading to the dismissal of the request made in the infringement action.

In the current decision, the judge reporting the case, Nancy Andrighi, noted that art. 56. § 1 of Law 9279/1996 authorizes the plea of nullity in defense of patent and industrial design infringement cases.  The minister also argued that “in these cases, as the procedural legal relationship is not integrated by the INPI, there is no question of usurping the jurisdiction of the Federal Court”.

The decision made it clear that “the recognition of the invalidity of patents and industrial designs by the State Court, since it occurs on an incidental basis, only has inter partes effects and can serve exclusively as a basis for dismissing the claims made in the related infringement action.”

In view of this, the minister voted to grant the request and concluded by observing that, since there is express authorization in Law 9.279/1996 regarding the possibility of arguing the invalidity of patents and industrial designs as an incidental issue in infringement actions, preventing the rule from being implemented would result in an undue restriction on the defendant’s fundamental right to a full defense, in violation of the provisions of art. 5, LV, of the Constitution of the Republic.

Voting in agreement with the rapporteur, Justice Marco Aurélio Buzzi referred to the doctrine “Intellectual Property in Brazil”, by Dannemann et al, to highlight the passage that says that the provision of art. 56, § 1 of the LPI “represents an innovation and, undoubtedly, an advance over the previous law. It allows any person sued in court for infringement of a patent to argue, as a matter of defense, in the course of the action itself, the invalidity of the patent. We understand that this plea of invalidity does not authorize a state judge to declare the patent invalid, but only to recognize that the granting of the patent was improper and that, therefore, there is no need to condemn the defendant for its infringement.”

Accordingly, the panel voted unanimously to hear and uphold the appeal.

The decision can be accessed via the link: Embargos De Divergência em REsp nº 1332417/RS

Note: For quick release, this English version is provided by automated translation without human review.