Brazilian Desk

Patent disputes and the principle of free evaluation of evidence in Brazil

Dr. Karin Grau Kuntz
Lawyer, LL.M.
Dr. Tobias Popp
Patent Attorney, Licensed Pharmacist, Dr. rer. nat., M.Sc.

The present case concerns invalidation proceedings against a utility model patent for breast prostheses. The grounds for this invalidation request were the alleged non-compliance with the legal requirements of inventive steps and descriptive sufficiency as stipulated in Brazilian Law 9279/96 (Industrial Property Law).

Given that the issue discussed in the invalidation proceedings involved predominantly technical aspects beyond the Court's expertise, a chemical engineer was summoned as a technical expert to resolve the controversy. Appointing a technical expert is usually done in Brazil, as judges who handle invalidation proceedings do not necessarily have a technical background or profound experience in invalidation proceedings.

Having considered the expert opinion prepared by the chemical engineer, the judge ruled in favor of the Plaintiff. The administrative act that granted the utility model patent was declared null due to the lack of inventive step and descriptive sufficiency, as substantiated by the technical expert's findings.

During the appeal phase, the appellant argued that the Court's appointment of a chemical engineer was unsuitable for the case. Given the specificities of the subject matter, the expert opinion should have been conducted by a mechanical engineer. 

Contrary to the appellant's argument, the Court found that no evidence of deficiency in the expert opinion or the expert's technical background was presented. Furthermore, the Court strongly emphasized that the evidence produced as expert opinion constitutes an element in forming the judgment's conviction. Further, that it is the prerogative of the Court to evaluate the evidence presented freely. The decision to declare the utility model patent invalid was upheld and confirmed on March 18, 2024, by the Superior Court of Justice. 

The confirmation of the judgment by the Superior Court of Justice holds significant importance, particularly in disputes involving intellectual property including nullity proceedings, where the competence of technical experts appointed by the judge is often decisive and therefore frequently challenged.

In such cases, and considering Brazilian judges' lack of technical background, the appointed expert and its technical knowledge plays a crucial role in determining the validity of patents or other intellectual property rights. Given the specialized nature of these disputes, disagreements often arise regarding the qualifications and suitability of the appointed expert to assess complex technical matters.

The Superior Court of Justice's decision of 18 March 2024 reaffirms not only the judgment itself but also the competence of court appointed experts and the judiciary's confidence in the expertise of the technical experts. 

The Superior Court of Justice further confirmed the principle of free evaluation of evidence. In this regard, the decision is in alignment with the recent decision of the EPO’s Enlarged Board of Appeal in G2/21, which also reaffirmed the concept of free evaluation of evidence.