According to Article 56 of Law No. 9.279/96 (Industrial Property Law), “a nullity action can be filed at any time during the term of a patent by BPTO or by any legitimately interested party. § 1 – Nullity of a patent may be argued, at any time, as matter for defence”.

Despite the clarity of the law, the country’s jurisprudence oscillates in recognizing the possibility of the defendant to argue the nullity of a patent as a matter of defense, within the scope of the State Court, when suffering an infringement action.

This is because, as provided for in Article 57 of the Industrial Property Law, “nullity actions will be adjudged in the forum of the Federal Courts, and INPI, when not plaintiff, will participate in the action”.

And, therefore, the discussion could not take place at the state level. In this sense, we highlight REsp No. 1,281,448/SP, reported by Justice Nancy Andrighi, of the Third Panel of the Superior Tribunal of Justice (STJ), judged on 09/08/2014.

However, on 10/29/2020, the STJ, in the records of REsp nº 1.843.507/SP, reported by Minister Paulo de Tarso Sanseverino, recognized “the possibility of claiming the nullity of patents and industrial designs as a matter defense in infringement actions, within the competence of the State Court, exempting, in these cases, the participation of the INPI”, whose decision will have effects only between the parties.

In a judgment of 06.30.2017, in the records of REsp 1,522,339/PR, Minister Luis Felipe Salomão had already pointed out the effects granted regarding the nullity action that is being processed before the Federal Court, which are erga omnes; and the effects granted regarding the incidental declaration of nullity before the State Court, as a matter of defense, these being inter partes.

Following this jurisprudential understanding, on 03.03.2021, the 17th Civil Chamber of the Court of Justice of Rio de Janeiro (TJ-RJ), in the judgment of Interlocutory Appeal No. 0068520-12.2020.8.19.0000, reported by Des. Wagner Cinelli, recognized the possibility of the defendant raising the nullity of the patent as a matter of defense in an infringement action.

These judgments reflect an advance of the judiciary in interpreting issues inherent to Industrial Property.

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Author: Thaís de Kássia Rodrigues Almeida Penteado, Senior Associate & Head of Litigation at Peduti Advogados.

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”