Specialized Intellectual Property Courts in Brazil
Denis Borges Barbosa and Pedro Marcos Nunes Barbosa
The 1996 Industrial Property Law mentioned the creation of specialized
courts in the field of intellectual Property1. However, until five years after its
approval, Brazil had created no special trial or appellate Intellectual Property
court.
Federal courts in Brazil essentially rules those cases brought against Federal
entities. Therefore, the validity of patent issuances and trademark registrations
are discussed in those courts, but infringement suits are, as a rule, decided by
the 27 courts of state judicial system. Until a recent change in the case law,
invalidity claims were raised in both Federal (principaliter) and state courts
(incidentally), even though in the latter’s case just as a matter of defense.
There is thus some risk of divergent readings of the same Federal statute. A
minimum national coherence is assured through a midlevel Federal court
sitting in Brasilia (the Superior Tribunal de Justiça – STJ), which hears thirdlevel appeals from both state and federal appellate courts. Only the eventual
and actually rare case claiming Constitutional issues would also be analyzed by
the Supreme Federal Court
Nonetheless, only in 2001 the 2nd Federal Regional Court, the jurisdiction of
which covers Rio de Janeiro state, where the Brazilian Patent and Trademark
Office (INPI) is located, issued an internal order whereby four trial courts are
to receive on an exclusive basis the suits discussing industrial property2.
Federal plaintiffs are not obliged to choose as the venue the city where the
INPI headquarters are, but most of them prefer to do so, and that carries
enough numbers to justify this dedicated role of the four Federal trial courts,
as the only ones in Brazil so specialized. In fact, these courts also deal with
social security matters, which usually represents 95-97% of their overall
numbers; patents, trademarks, designs, etc., represent therefore a quite small
but a probably more interesting (and economically meaningful) portion of the
everyday judicial chore.
Law 9.279/96, “Article 241 - The Judiciary is authorized to create special courts to settle questions relating
to intellectual property”. This authorization would have only a symbolic purpose, as under art. 96 of the
Constitution the Judiciary itself is the only allowed source of proposals to add new judges and courts. That is
to say, the Industrial Property Law, which was not originally proposed by the Judiciary, had no power to
grant what was not requested beforehand. Furthermore, even in case the authorization was deemed valid, a
Federal Law could not authorize State Courts to reorganize its own services. In other hand, the concentration
of a legal issue in the trial or appellate court, without creating new jobs or incurring in budgetary increases
may and was done without statutory change.
1
The specialized jurisdiction was introduced by Art. 47, III and sole paragraph of the “Provimento nº. 01, de
31/01/01 da Corregedoria-Geral da Justiça Federal da 2ª Região”.
2
Another significant change occurred when two specialized appellate panels
were added to the trial courts of the same 2nd Federal Regional Court in 20053.
Whenever the procedural requirements require a sectional decision en banc, the
two specialized panels seat in a joint session4.
By 2004, the then President of INPI, Ambassador Jaguaribe, was quite aware
of the doctrinal changes incurred in the U.S. Intellectual Property Law after
the creation of their specialized courts in the early 80’s. A number of Brazilian
academics and some officials in charge of the relevant public policy believed
then that the specialized judiciary in the U.S. had probably increased the
quality of the decisions, but with some unbalance towards the interest of
patent or trademark holders and eventually to the detriment of public interest.
Therefore, the INPI and some academic institutions strived to provide the
newly specialized judges (appellate and trial) and their staff with the
opportunity to obtain information and engage in broader discussion with both
the professional entities and the Intellectual Property university programs.
These opportunities apparently contributed to a very sensible change in the
content of the decisions of the specialized trial and appellate levels of the
second Federal Regional Court. As an example, in some chosen issues,
including the very controversial pipeline patent one5, from 1999 to the present
moment the number of decisions favoring the patent holder is mostly
declining.
The table above, where the red line represent the courts decisions favoring the
pharmaceutical, agrochemical and biotechnological patent holder (which seek
The special appellate courts were created by art. 18 of the “Resolução nº 36, de 25 de novembro de 2004”,
to be active by February 2005.
3
That happens, for instance, where an appeal is decided by the three-judge panel with a divergent vote; a
new appeal may be directed to the enlarged panel.
4
As to the Brazilian version of the pipeline patent, see BARBOSA, Pedro Marcos Nunes, A Brief Note
Concerning Pipeline Patents in Brazil, WIPO-WTO Colloquium Papers - Research papers from the WIPOWTO colloquium for teachers of intellectual property law 2012,
p. 31, found at
http://www.wto.org/english/tratop_e/trips_e/wipo_wto_colloquium_aug12_e.pdf, visited February 12,
2015.
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deadline extensions), seem to indicate that the special trial and appellate
courts, by entertaining a closer experience with IP matters, and learning to rely
on the technical expertise of the Patent and Trademark Office, could achieve
a more prudent and advised result.
Once this new trend become apparent, some large-scale plaintiffs increased
filing actions outside Rio’s Federal Court6, not necessarily achieving different
results in all cases. Even though it cannot be noticed any special deference by
the STJ to the decisions of the Federal Courts of Rio de Janeiro, the Brasilia
court also works in a somewhat specialized manner, as all matters dealing with
Intellectual Property Law are submitted to only two permanent panels. Up to
this moment, in most cases the Rio court decisions have been welcomed by
STJ in Brasilia.
Another important instrument of change of the sense of the decisions (not
only at the second Federal Regional Court) was the start of amici curiae
proceedings before the specialized courts and, in some cases, even before the
STJ7.
This procedural instrument has brought for the first time the opinions and
contributions from trade associations, NGOs, and other concerned entities to
what were essentially private suits discussing patent, data protection and
related matters. Amicus curiae briefs have turned to be one of the most
extensively used means to raise public policy and even strictly factual issues
before the courts.
In the last few years, some state courts have proffered to specialize appellate
or, in one case, trials courts. This has been occurring in those venues where
intellectual property matters are comparatively more litigated.
Rio de Janeiro state court has done so only at the trial level, and in a very
recent change also included copyright suits within the scope of what are in
fact general commercial courts. Most practitioners do not feel that this token
specialization has caused any sensible change in the quality or expediency of
the Rio state courts.
In São Paulo and in Rio Grande do Sul states, the local system started to
include two specialized IP chambers in the last 2 or 3 years. Those panels, as it
Aiming a not-specialized trial, in which the arguments may sound more persuasive to a less experienced
judge.
6
Other important reasons may have caused the change of decision making at the Brazilian specialized courts.
See BARBOSA, Denis Borges, Patents And The Emerging Markets of Latin America. In: Frederick M.
Abbott; Carlos M. Correa; Peter Drahos. (Org.). Emerging Markets and the World Patent Order.
1ed.Massachusetts: Edward Elgar, 2013, v. 1, p. 135-154, where we suggest that besides the court
specialization and the amicus curiae proceedings, the enhanced role of the Ministry of Health in IP issues, the
governance provided by the Interministerial Committee on IP (GIPI) and the Innovation Law have been
contributing significantly to the Brazilian IP environment.
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happens in their Federal counterparts8, deal simultaneously with other
matters, mostly commercial fare, but exclude copyright issues, which are dealt
by the general Civil matter panels.
However, especially in the São Paulo case, where the new court are operating
for more time, it became quite apparent that specialization has been
improving the quality and consistency of singular decisions, and to a
considerable extent, also their public policy content.
Some academics (and the authors certainly are counted among them) feel that
these new specialized Federal and state courts, up to this moment, have
changed themselves to the role of the mainstream purveyors of the
substantive Intellectual Property in Brazil, with a quite balanced attention
both to the private and the public interest content of this field of law.
At the 2nd Federal Regional Court, the Appellate Panels also take criminal, social security and tax cases.
Industrial Property matters are usually handled in specialized sessions where multiple cases are heard and
decided, sometimes to all deep and heat of the discussions.
8