Partner, Lawyer, Industrial Property Agent
Marcelo has been working for almost 20 years in the intellectual property field. He is Vice-President of Intellectu[...]read +
by Marcelo Mazzola
April 01, 2021
In an emblematic judgment, the Seventeenth Civil Chamber of the TJ/RJ, by a majority vote, recognised that a defendant can invoke the invalidity of a patent – which is the basis for an infringement lawsuit – as a defence.
In summary, the owner of a patent (already in the public domain) filed an infringement lawsuit seeking that the defendant be ordered to pay compensation for the improper use of the technology. In its answer, the defendant alleged that it was not infringing the claimant’s patent and, at the same time, argued that the patent was invalid, supported by Article 56, §1, of Law no. 9,279/96:
Article 56. A lawsuit to invalidate a patent can be filed at any time during the validity of the patent, by the Brazilian Patent and Trademark Office – BPTO or by any person with a legitimate interest.
§1 The invalidity of a patent can be argued, at any time, as a defence.
In the interlocutory ruling to ensure the procedural well-being of the lawsuit and determine how it should progress, although the trial court judge correctly recognised that the defendant may incidentally argue the invalidity of the patent as a defence, he set out that the Federal Justice had already rejected an invalidity lawsuit on the merits filed by another company against the patent owner (claimant in the infringement lawsuit). In view of this, he pointed out that such ruling (which recognised the validity of the patent) would have erga omnes effects, which would prevent re-examination of the topic in the midst of the infringement lawsuit. Thus, he determined only the existence or not of patent infringement as a disputed issue.
Dissatisfied, the defendant lodged an Interlocutory Appeal, which, initially, was not admitted by the Reporting Justice because it was held that the matter was not included in the list of Article 1,015 of the Code of Civil Procedure (CPC), since the theory of mitigated completeness did not yet apply to the situation. An Internal Appeal was lodged which ended up being admitted by the Reporting Justice, but he voted to reject it on the merits.
In general, the Reporting Justice held that “the erga omnes effect of the decision handed down by the Federal Justice in the case records of the lawsuit to declare the patent invalid operates ope legis, in accordance with the provisions of Article 57, heading and §2 of Law 9,279/96. Indeed, in light of the abovementioned provision, the possible filing of a lawsuit to declare the patent invalid before the Federal Justice would be dismissed, not due to the lack of interest in bringing the proceedings, but due to the material res judicata”.
Subsequently, Justice Wagner Cinelli voted for the appeal to be granted, and he was accompanied by Justice Marcia Ferreira Alvarenga.
Accurately, the vote of the Reporting Justice indicated: “the central issue of the appeal consists of knowing if the decision handed down in the case records of the lawsuit that was heard before the Federal Justice has the power to make the topic of the invalidity of the patent unquestionable in this lawsuit, so that it would be inappropriate to determine any patent invalidity as a disputed matter”.
In this regard, it was initially emphasised that there is no need to speak of res judicata as a possible obstacle to considering the topic. Three grounds were used:
In this context, the appeal was granted to reverse the trial court ruling and include “the possible invalidity of the patent now under discussion as a disputed issue”.
The ruling is correct and demonstrates the maturity of the Judiciary with respect to disputes involving industrial property rights.
It is important to set out – even if quickly – since the topic was not discussed in the ruling in question – that the understanding settled by the TJ/RJ does not violate the understanding espoused by the Superior Court of Justice (STJ) in REsp 1.527.232⁄SP (Topic 950).
This is because, such stance refers to the jurisdiction of the Federal Justice for lawsuits to invalidate trademark registrations (and not specifically for lawsuits to invalidate patents, the invalidity of which can also be argued incidentally in light of Article 56, §1, of the IPL).
And another detail of the case: as seen, the patent that was the subject matter of the infringement lawsuit had already expired, which is why the defendant would not, strictly speaking, have any interest in bringing the invalidity lawsuit in the Federal Justice.
In short, the invalidity of the patent can only be declared through its own lawsuit before the Federal Justice, with the participation of the Brazilian Patent and Trademark Office – BPTO. On the other hand, invoking the invalidity as a defence is fully possible, has express legal provision, enshrines the full right to a defence and avoids the supposed infringer from being obliged to file a lawsuit at the Federal Justice, with the expenditure of resources and time. Therefore, the TJ/RJ was right.
It should be noted, finally, that, after some initial wavering, the STJ is also going in the direction of recognising the possibility of incidentally discussing the invalidity of patents in infringement lawsuits, the ruling on which, however, will only produce effects between the parties.
 TJ/RJ, AI nº 0068520-12.2020.8.19.0000, Des. Rel. Wagner Cinelli, Décima Sétima Câmara Cível, julgamento em 03.03.21.
 Art. 57. A ação de nulidade de patente será ajuizada no foro da Justiça Federal e o INPI, quando não for autor, intervirá no feito. § 1º O prazo para resposta do réu titular da patente será de 60 (sessenta) dias. § 2º Transitada em julgado a decisão da ação de nulidade, o INPI publicará anotação, para ciência de terceiros.
 Art. 48. A nulidade da patente produzirá efeitos a partir da data do depósito do pedido.
, Reporting Justice LUIS FELIPE SALOMÃO, Second Section, electronic Justice Gazette (DJe) 05 February, 2018, Topic 950⁄STJ
 “The issues surrounding the trade dress of goods, unfair competition, and other similar lawsuits, since they do not involve registration at the Brazilian Patent and Trademark Office – BPTO and deal with lawsuits between private parties, are unmistakably within the jurisdiction of the state justice, since they does not affect the institutional interest of the federal government agency. However, it is the responsibility of the Federal Justice, in a lawsuit to invalidate a trademark registration, with the participation of the BPTO, to impose abstention from use on the owner, including with respect to a provisional injunction.
 The exception also applies to industrial designs, in accordance with Article 118 of the Industrial Property Law – LPI.
 Lawsuit no. 0137644-20.2017.4.02.5101, Reporting Justice Marcello Granado, Second Specialised Panel, electronic Justice Gazette (DJe) 26 June 2018; Lawsuit no. 0032264 76.2015.4.02.5101; Reporting Justice Paulo Espirito Santo, First Specialised Panel, DJe 22 February 2018.
 “In short, the discussion on the validity of a trademark, patent or industrial design registration, under the terms of the IPL, must be discussed administratively or, if a party chooses to resort to the judiciary, it must be undertaken in a lawsuit filed before the Federal Justice, with the participation of the BPTO in the case. Without this discussion, the registrations issued by that body must be deemed valid and produce all legal effects”. REsp no. 1,281,448/SP, Justice Nancy Andrighi, Third Panel, Justice Gazette (DJ) 8 September 2014.
 STJ, REsp 1.843.507/SP, Reporting Justice Paulo de Tarso Sanseverino, Third Panel, DJe 29 October 2020. “It follows that, although incidental recognition of the invalidity of trademarks is not possible, the incidenter tantum examination of the invalidity of patents and industrial designs is perfectly possible, resulting in this possibility of express determination in law. (…) There is no obstacle, therefore, to that same law setting forth an exception to this rule in Articles 56, §1, and 118, expressly excepting the possibility of challenging the invalidity of patents and industrial designs as a defence in infringement lawsuits, under the jurisdiction of the State Justice, dispensing, in these cases, with the participation of the BPTO.”