STJ rules that the granting of a utility model for improvement, in itself, does not exclude infringement of the patent for the main invention

STJ rules that the granting of a utility model for improvement, in itself, does not exclude infringement of the patent for the main invention

In a recent judgment, the 3rd Panel of the Superior Court of Justice (STJ) unanimously ruled that being the holder of a duly granted utility model (UM) patent does not, in itself, authorize the use of the product that implements it, especially when this exploitation infringes an invention patent (IP) held by a third party.

The dispute arose when a ceramics company filed a lawsuit against another company in the same industry over the sale of a specific type of “modular block for vertical planters”, claiming that this product infringed its patented invention. The defendant company then claimed that it could exploit the product, since it had a utility model patent, also granted by the INPI, which served as the basis for the manufacture of the product sold.

At first instance, the São Paulo Court of Justice, based on an expert report, held that the product marketed by the defendant infringed the plaintiff’s IP. In the appeal, the judges understood that the granting of the MU to the defendant by the INPI was a circumstance sufficiently capable of guaranteeing the lawful exploitation of the product developed from this patent.

Thus, in the STJ, the discussion consisted of defining whether the exploitation of a product that implements the defendant’s utility model (improvement) is liable to characterize infringement of the patent for the invention (main) held by the plaintiff.

Justice Nancy Andrighi clarified that, “although the owner of the MU has the right to exploit its creation and prevent third parties from making use of it, it is not allowed to use, without authorization, the invention of a third party that is part of the object on which the improvement was implemented”. This is because, explains the rapporteur, one of the rights guaranteed by the patent does not include the right to use and market the final product that implements the protected invention, especially when it is also made up of other protected third-party inventions.

According to the judge, what must be examined in order to verify the occurrence of the counterfeiting pointed out in the initial petition is whether or not the plaintiff’s invention is being used in the product manufactured and marketed by the defendant, as defined in art. 41 of the IPL.

The full judgment can be accessed via the link: https://processo.stj.jus.br/processo/julgamento/eletronico/documento/mediado/?documento_tipo=integra&documento_sequencial=214113552&registro_numero=202300030113&peticao_numero=&publicacao_data=20231025&formato=PDF

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