It is possible to claim incidental patent nullity as a matter of defense

It is possible to claim incidental patent nullity as a matter of defense

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.

 

It is possible to claim incidental patent nullity as a matter of defense

 

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.”

Study about biotechnology patents is published by the Brazilian Patent and Trademark Office. The study will certainly help the Brazilian authorities to analyse the need for Brazil to sign the Budapest Treaty.

The Brazilian Patent and Trademark Office – BPTO has recently published a new study about biotechnology patents in Brazil, analysing the deposits in which it was deposited biological material.

The study shows the panorama of the deposits of biotechnology patents in Brazil between 2010 and 2016.

The Biotechnology can be applied, for example, on therapeutic proteins, probiotics, immunologic medicaments, vaccines, plagues control, biofertilization, biofuels, biosensors and plant genetic improvement.

Since it is necessary a description of the patent’s object for the concession of any patent, the depositors of biotechnology patents also need to deposit the biologic material alive at an authorized institution. There are some kinds of biological material able to be deposited, as DNA or protein sequence listing, bacterial strains, yeast strains, fungus strains, protozoal strains and cell lineage.

Fonte: API

During this period, the researchers have found 1.583 deposits of biotechnology patents in Brazil. Among the principal kinds of deposit, from all those biological material deposits, 682 were microorganisms, 386 for medicaments and 332 sub products of fermentation. The five principal depositors were Brazilian universities, being the Federal University of Minas Gerais the top depositor, with 154 deposits, the University of São Paulo the second, with 117 deposits, and the University of Campinas the third, with 71 deposits. Regarding the geographical distribution, the principal region of origin of the deposits is the Southeast Region, with 899 deposits, where are located the three biggest metropolitan areas and the three principal depositors, while the North Region, where the Amazonian forest is located, has only 30 deposits.

It is also important verify that only 2,15 % of the deposits had its biological materials also deposited at International Depositary Authorities, probably as a consequence of the fact that Brazil has not signed the Budapest Treaty yet.

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure is administered by the World Intellectual Property Organization (WIPO). According the Budapest Treaty, the deposits of biologic material can be made at an authorized international depositary authority, what make easier for the deposit of a biotechnology patent in other country.

The study will certainly help the Brazilian authorities to analyse the need for Brazil to sign the Budapest Treaty.

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Lawyer Author of the Comment: Rodrigo Britto de Albergaria
Source
Headline: “Novo radar tecnológico mapeia patentes de biotecnologia e material biológico”

“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.”