Patent Infringement Litigation in Brazil: How the Split Between State and Federal Courts Works
Brazil splits patent cases between state and federal courts. Learn how infringement suits, invalidity defenses, injunctions and damages work in practice.
9/24/20267 min read
A competitor starts selling a product in Brazil that reads on your client's patent. You want to stop it quickly and recover damages. But in Brazil, you cannot simply file one lawsuit and have infringement and validity decided together. The two questions usually run in different courts, under different judges, on different timelines. If you plan your strategy without accounting for this, you can lose months, lose leverage in settlement talks, or find your client's patent attacked in a court you did not expect.
This guide explains how patent infringement litigation works in Brazil: which court hears what, how defendants attack validity, how fast you can stop an infringer, and what you can recover.
What a Brazilian patent lets you stop
Under Article 42 of the Brazilian Industrial Property Law (Law 9,279/1996, the "LPI"), the patent owner can prevent third parties from making, using, offering for sale, selling or importing, without consent:
the patented product; and
a product obtained directly by a patented process, or the process itself.
The owner can also act against anyone who contributes to infringement by others (Article 42, §1).
For process patents, Brazilian law shifts the burden of proof. If a court orders it, the defendant must prove that its product was made by a different process. Otherwise, infringement is found (Article 42, §2). This matters a lot in chemical and pharmaceutical cases, where the patent owner rarely has access to the competitor's manufacturing line.
Article 43 sets out the exceptions. They include private non-commercial acts, experimental use for scientific or technological research, and the use of the invention to produce data for marketing approval after the patent expires.
The split system: state courts for infringement, federal courts for validity
This is the main structural point foreign counsel need to understand.
Infringement actions are filed in state courts. They are disputes between private parties, so they belong to the state courts (Justiça Estadual). The patent owner files there to obtain an injunction, damages and search and seizure orders.
Nulity actions are filed in federal courts. Under Article 57 of the LPI, a nullity action must be filed in federal court (Justiça Federal), and the Brazilian Patent and Trademark Office (INPI) must take part in the case when it is not the plaintiff. A nullity action can be filed at any time while the patent is in force, by INPI or by anyone with a legitimate interest (Article 56). A final decision has effect against everyone (erga omnes), and INPI publishes it for third parties.
In practice, a typical Brazilian patent dispute looks like this:
The patent owner files an infringement action in state court and asks for a preliminary injunction.
The defendant answers in state court and, in parallel, files a nullity action in federal court against the patent owner and INPI.
Both cases move forward at the same time, each with its own court-appointed technical expert.
Can the defendant raise invalidity in the state court case?
Yes, with limits. Article 56, §1 of the LPI allows invalidity to be raised "at any time as a defense." For years, courts disagreed on whether state courts could examine patent validity at all, since INPI is not a party in those cases.
The Superior Court of Justice (STJ) settled the question in June 2024. In EREsp 1.332.417/RS, reported in Informativo 818, the Second Section held that a defendant in an infringement action can raise the invalidity of a patent or industrial design as a defense before the state court. Because INPI is not part of that case, this does not take over the federal courts' jurisdiction.
The key limit is the effect of the decision:
If the state court accepts the invalidity defense, the decision binds only the parties to that case (inter partes). It serves only to dismiss the infringement claim.
The patent stays valid against everyone else until a federal court declares it void in a proper nullity action.
The STJ has made clear that this exception applies to patents and industrial designs only, not to trademarks. Trademark invalidity must always go through INPI or the federal courts.
Practical consequence for patent owners: expect the invalidity argument in both courts. Your technical evidence on validity needs to be consistent across the two cases.
Will the infringement case be suspended while validity is decided?
Not automatically. Defendants often ask the state court to suspend the infringement action until the federal court decides validity. They rely on the rule for "external prejudicial questions" in Article 313, V, "a" of the Code of Civil Procedure (CPC).
Two points are worth knowing:
The STJ has recognized that a pending nullity action can justify suspending an infringement or damages action. But suspension depends on the circumstances of the case and is not a right of the defendant.
Even when suspension is granted, Article 313, §4 of the CPC limits it to one year. After that, the state court must move forward.
STJ decisions on suspension are still not uniform. Courts have sometimes let the infringement case continue to the expert evidence stage regardless of the parallel nullity action. For patent owners, this makes a well-built technical case from the start even more important.
Preliminary injunctions: how fast can you stop an infringer?
Brazilian courts grant preliminary injunctions in patent cases, including against large technology companies. Two legal bases apply:
Article 209, §1 of the LPI allows the judge to order the infringement to stop, in the infringement action itself and before the defendant is served, to avoid irreparable harm or harm that is hard to repair. The judge may require a cash deposit or a guarantee.
Article 300 of the CPC, the general rule for urgent relief, requires evidence that the right is probable and a risk of harm or of the outcome being compromised by delay.
In recent years, courts in Rio de Janeiro have issued injunctions in disputes over standard-essential patents involving global technology companies. This has made Brazil a jurisdiction that patent owners take into account in international licensing negotiations.
What judges look for in practice:
a granted patent in force (a pending application supports damages but not an injunction);
a clear technical comparison between the claims and the accused product, ideally backed by an independent technical opinion;
evidence of the infringing acts in Brazil (purchases, invoices, import records, online listings); and
a showing of urgency, which becomes weaker if the patent owner waited a long time before suing.
Either party can appeal the decision immediately through an interlocutory appeal (agravo de instrumento, Article 1.015 of the CPC), so the fight over the injunction often moves quickly to the appellate court.
Early evidence. When the evidence is in the defendant's hands, the CPC allows an action for early production of evidence (Article 381). The patent owner can use it to secure expert examination or documents before deciding whether to sue.
Damages: what you can recover
Article 210 of the LPI lets the patent owner choose the damages method most favorable to it, among three:
the profits the owner would have made if the infringement had not occurred;
the profits the infringer made from the infringement; or
the royalty the infringer would have paid under a license covering the infringed right.
Two other rules are particularly relevant for foreign patent owners:
Damages can reach back to the publication of the application. Under Article 44, the owner can claim compensation for exploitation between the publication of the application and the grant. If the infringer knew the content of the application before publication, the period starts when the exploitation began. The claim is limited to the scope of the granted claims (Article 44, §3).
Statute of limitations. Under Article 225, a damages claim for industrial property infringement must be filed within five years.
Because Brazilian patent examination can take a long time, the pre-grant damages rule is valuable. Monitoring competitors while the application is pending, and gathering evidence of their activity, can significantly increase the eventual recovery.
Criminal enforcement
Patent infringement is also a crime under Articles 183 and 184 of the LPI. This covers making the patented product or using the patented process without authorization, as well as selling, stocking or importing infringing products for commercial purposes. The penalties are low (three months to one year of detention, or a fine), and under Article 199 prosecution depends on a private complaint filed by the patent owner.
In practice, criminal proceedings are used mainly for the search and seizure measures they allow. They are rarely a primary strategy in technology patent disputes.
Which courts will hear the case?
Where the case goes depends on the parties and where the infringement happens, but specialized courts help:
Rio de Janeiro has federal trial courts and appellate panels at the Federal Regional Court of the 2nd Region specialized in industrial property. Most nullity actions are heard there, because INPI is based in Rio.
São Paulo has specialized business law chambers at the São Paulo Court of Appeals (TJSP). They regularly hear industrial property infringement cases.
The state courts of Rio de Janeiro have business courts that have decided several high-profile patent infringement cases.
Filing in a court with experience in industrial property usually means better-quality expert work and more predictable decisions.
Practical checklist before filing in Brazil
Confirm the patent is granted and in force, and that maintenance fees are paid.
Check for a pending or likely nullity action at INPI or in federal court.
Collect evidence of infringing acts in Brazil, not just abroad.
Get a technical opinion comparing the claims with the accused product.
Consider an early evidence action if key proof is in the defendant's hands.
Plan the damages theory early and choose which of the three Article 210 methods to pursue.
Prepare to defend validity in two courts at the same time.
FAQ
Which court hears patent infringement cases in Brazil?
State courts hear infringement actions between private parties. Federal courts hear nullity actions, because INPI must take part in those cases.
Can a defendant challenge patent validity in a Brazilian infringement case?
Yes. Under Article 56, §1 of the LPI, and as confirmed by the STJ in 2024 (EREsp 1.332.417/RS), invalidity can be raised as a defense in the state court. The decision binds only the parties. Only a federal court can invalidate the patent with effect against everyone.
Is a pending nullity action enough to suspend an infringement case?
Not automatically. The court may suspend the case based on Article 313 of the CPC, but suspension is limited to one year and depends on the circumstances.
Can I get a preliminary injunction for patent infringement in Brazil?
Yes. Article 209, §1 of the LPI and Article 300 of the CPC allow injunctions, even before the defendant is served, when the right is probable and there is a risk of harm. The court may require a guarantee.
Can I recover damages for infringement that happened before my patent was granted?
Yes. Article 44 of the LPI allows compensation from the publication of the application, limited to the scope of the granted claims.
How long do I have to sue for damages?
Five years, under Article 225 of the LPI.
Contact us
If your client holds a Brazilian patent, or a pending application that a competitor is already exploiting, the choices you make in the first weeks affect the outcome: which court, which evidence and which injunction strategy. Reis Araujo Advogados advises foreign companies and international IP firms on patent enforcement and defense in Brazil, working closely with the client's global counsel.
