Brazil has emerged as a significant player in global intellectual property (IP) disputes, particularly in matters involving standard essential patents (SEPs). The country is chosen by IP rights holders to protect and enforce their rights due to its robust legal framework.
In today’s fast-paced markets, understanding the scope of IP protection available for new technologies is vital. When protecting IP assets internationally – whether through patents or other mechanisms – it is important to consider varied legal frameworks, enforcement mechanisms, and market dynamics.
Brazil’s legal framework offers multiple layers of IP protection, including patents, copyrights, trade secrets, and fair competition practices. The judiciary, increasingly specialized, acts with rigor and efficiency to address violations, fostering a predictable and innovation-friendly legal environment.
Home to over 212 million people, Brazil stands as the seventh most populous country in the world, representing a vibrant and rapidly growing market. In the global digital arena, the country stands out as one of the largest markets: it is among the leading consumers of smartphones in Latin America and ranks fifth among countries with the largest digital populations, only behind China, India, the United States, and Indonesia. Additionally, Brazil is the third-largest audience on Instagram, surpassed only by India and the United States, and ranks fourth in Facebook users, behind India, the United States, and Indonesia.
From an economic perspective, Brazil ended 2024 as one of the world’s top ten economies, with a Gross Domestic Product (GDP) of approximately USD 2.19 trillion. The 3% growth rate highlights the country’s resilience to global challenges, reaffirming its attractiveness as an expanding market for technological investments.
Legal Framework and Intellectual Property Protection
The Constitution of the Federal Republic of Brazil of 1988 (article 5, XXIX) guarantees industrial property rights aimed at promoting social interest and economic development. Complementing this, the Brazilian IP Law (Law 9.279 of 1996) grants patent holders exclusive rights to prevent unauthorized use, manufacturing, offering for sale, selling or importing for such purposes their patented products or a product obtained directly from the patented process, enforcing these rights through civil and criminal sanctions.
Brazil’s legal framework does not discriminate between types of patents. All patents must fulfil the same legal requirements and are enforced within the same legal standards. SEPs have the same treatment of non-essential patents, meaning that the holder of an essential patent has the same rights as holders of non-essential patents. Both categories allow patent holders to prevent unauthorized exploitation of their technologies. Infringement constitutes a civil (article 42) and a criminal (article 184) offense, which may also amount to unfair competition (article 195, III). In cases involving SEPs, unfair competition often arises when companies bypass licensing
obligations, undercutting competitors who comply with licensing terms and generating undue profits at the patent holder’s expense. In the enforcement of a SEP, there is no reliance on essentiality – the evidence of infringement must meet the same legal standard of any patent enforcement in the country.
In Brazil, assertion of a single patent suffices to halt the infringement. Moreover, unlike some jurisdictions, Brazil does not require protective letters, preliminary validity reviews, or anti-suit injunctions. Procedural issues or technicalities rarely lead to the dismissal of infringement actions.
Additionally, under Brazilian IP Law (article 42, section 2), the burden of proof shifts to the defendant in cases where the disputed patent protects a process. The defendant is required to demonstrate that they use a process different from the one claimed in the patent. This provision reduces costs for the patent holder and expedites judicial proceedings, as the defendant is presumed to possess the necessary evidence to support their claims.
The dynamic distribution of the burden of proof (article 373, section 1, Brazilian Code of Civil Procedure) is also applied. Under this principle, the judge assigns the burden of proof to the party best equipped to produce evidence, whether due to technical expertise or access to information necessary to resolve the dispute. This allows for the defendant to be required to prove that their product does not use the patented technologies. The reversal of the burden of proof and dynamic distribution principles enhance the efficiency of judicial proceedings, assigning evidentiary responsibilities to those best positioned to prove contested facts.
Moreover, the Brazilian IP Law (article 44) ensures that patent holders are entitled to compensation, strengthening patent holder protections. While Brazil does not recognize punitive or enhanced damages as in the United States, patent holders can seek compensation for unauthorized use from the patent application’s publication date, using the most favorable criteria to the injured party (article 210).
Mixed Bifurcated Structure
A distinctive feature of Brazil’s patent litigation system is its “mixed bifurcated” structure. Unlike countries such as Germany or the United States, which have dedicated patent courts, Brazil separates infringement and invalidity issues into different forums: state courts handle infringement and compensation claims, and federal courts address patent validity, particularly when federal entities are involved. This model helps reduce procedural conflicts and streamline case resolution, enhancing efficiency.
Invalidity can also be raised as a defense against patent infringement in state courts, with effects limited to the parties involved. In a ruling on an appeal in June 20241, the 2nd Chamber of the Superior Court of Justice (STJ) confirmed that the recognition of patent invalidity by state courts, being incidental in nature, produces only inter partes effects. It can exclusively serve as a basis for the dismissal of claims brought in related infringement actions. Moreover, as Brazilian IP Law (article 56, section 1) explicitly allows the invocation of patent invalidity as a defense, disregarding this would result in an undue restriction of the fundamental right to a full defense, in violation of the Constitution (article 5, LV).
Notably, Brazil does not automatically stay infringement actions when nullity actions are filed. Courts require substantial evidence to justify a stay. This approach allows enforcement to proceed unless clear evidence of invalidity is presented. The kill rate of asserted patents is lower than those of other jurisdictions, such as the US and Germany.
In another judicial decision2, in September 2024, the 2nd Chamber of the STJ further clarified this stance, ruling that suspension must be based on substantial evidence, particularly expert evidence. The court ruled that suspension of an infringement action is not automatic, even when a related nullity action is pending before the Federal Court. The state court must first evaluate the evidence to determine whether the disputed subject matter falls within the scope of the patented technology or potentially infringes the plaintiff's IP rights. This prevents unnecessary delays, aligning with principles of proportionality and judicial efficiency.
Judicial Specialization
Judicial specialization has enhanced predictability and expertise in IP litigation. Federal courts in Rio de Janeiro pioneered specialized IP chambers in 2004, which created specialized business courts exclusively for IP disputes. This specialization has strengthened the judiciary’s capacity to address complex IP issues, including SEPs and ICT-related disputes.
Brazil’s judiciary has demonstrated its effectiveness in protecting patent holders' rights, granting injunctive reliefs to prevent irreparable harm and ensuring a balanced enforcement environment. These developments position Brazil as a reliable and strategic jurisdiction in global SEP disputes.
SEP Cases’ highlights: Preliminary Injunctions, Streamlined Expert Examinations, Enforcement Measures, and Global Licensing Agreements
Brazilian courts have demonstrated a strong commitment to curbing IP violations, placing significant importance on innovation and IP rights. Injunctive relief, particularly preliminary injunctions, has proven to be a crucial mechanism in safeguarding these rights, ensuring swift action against infringements and preventing further harm. Recent cases in the ICT and SEP sectors illustrate the judiciary’s proactive role in supporting patent enforcement and fostering innovation.
Preliminary injunctions, as defined under federal law (article 209, section 1, Brazilian IP Law; article 300, Brazilian Code of Civil Procedure), are instrumental in halting ongoing infringements. These measures uphold the patent holder’s rights while preventing irreparable damage to their interests.
Recent rulings in SEP cases have showcased judicial measures, including: (i) granting preliminary injunctions to halt infringements and safeguard patent holders’ rights; (ii) authorizing streamlined court-appointed expert examinations to expedite proceedings; (iii) implementing additional enforcement measures to ensure compliance; and (iv) facilitating global licensing agreements through litigation outcomes.
Noteworthy cases include WSOU v. ZTE, DivX v. Netflix, DivX v. Samsung, Philips v. TCL, Ericsson v. Apple, DivX v. Amazon, Nokia v. Oppo, JVC v. TCL, Dolby v. TCL, Ericsson v. Lenovo and Motorola, Nokia v. HP, Nokia v. Amazon, Mitsubishi v. TCL, NEC v. TCL, and ZTE v. Samsung.3
Conclusion
Strengthening SEP Enforcement in Brazil
Brazil’s legal system offers robust mechanisms to protect patent rights, address non-compliance and enforce judicial decisions. These mechanisms scale enforcement measures as necessary, making litigation a key tool to halt SEP infringements by unwilling licensees. By prompting good-faith licensing negotiations, litigation often culminates in global licensing agreements.
A Favorable Jurisdiction for Patent Disputes
Compared to other jurisdictions, Brazilian courts are distinguished by their high rate of granting injunctions, supported by strong evidence and a legal framework grounded in the Brazilian Constitution, IP Law, and Code of Civil Procedure. This approach not only ensures the protection of IP rights but also fosters fairness and innovation in the marketplace.
Recent cases highlight Brazil’s strategic relevance in global SEP disputes. The country’s specialized judiciary and robust legal framework make it a pivotal jurisdiction for protecting technological innovations.
Streamlined Expert Examination as a Strategic Tool
The use of streamlined court-appointed expert examination has emerged as an effective strategy for reinforcing preliminary injunctions. These expedited assessments provide courts with the technical clarity, enabling decisive rulings and strengthening the enforcement of patent rights. Moreover, these measures encourage global licensing negotiations, facilitating comprehensive agreements aligned with international standards.
Brazil’s Role in Shaping Global SEP Litigation
Enforcement measures under Brazil’s Code of Civil Procedure and Internet Bill of Rights, underscore the country’s commitment to upholding the rule of law in the digital and technological landscape. Recent high-profile cases showcase Brazil’s growing significance in global SEP disputes, emphasizing its role as a key jurisdiction.
Brazil’s approach exemplifies how strong judicial systems foster innovation, safeguard intellectual property, and promote dispute resolution through global cooperation and agreements. As global SEP litigation evolves, Brazil stands out as a critical player in balancing enforcement and negotiation, ensuring technological innovation is both recognized and protected.
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1. STJ. EREsp No. 1.332.417/RS, Reporting Justice Nancy Andrighi, Second Chamber, judged on 06/12/2024, published on 06/18/2024.
2. STJ. AgInt no AgIt no CC 198259/SP, Reporting Justice João Otávio de Noronha, Second Chamber, judged on 25/09/2024, published on 30/09/2024.
3. For more information on SEPs and FRAND litigation and policy in Brazil, as well as details on prominent cases from 2023 and 2024, see: LICKS, Otto; ABOIM, Carlos; BARRETO, Rodolfo. Brazil: SEPs and FRAND – Litigation, Policy, and Latest Developments. Available at: https://globalcompetitionreview.com/hub/sepfrand-hub/2024/article/brazil-seps-and-frand-litigation-policy-and-latest-developments.
