Imagine that a company (let’s call it “Company X”) manufactures or uses a certain machinery in its operation. Later, she is surprised by a lawsuit filed by a third party (“Plaintiff Y”), who claims to have filed a Utility Model patent application with the Brazilian PTO for identical equipment. Plaintiff Y demands the immediate cessation of the use of the machinery and the payment of an indemnity for unauthorized use.
What many think: “If the third party has already filed the patent application with the Brazilian PTO before, we cannot use the equipment and will have to pay the indemnity.”
In practice, it’s not quite like that.
The challenge and specialized defense in industrial property allow to demonstrate the real legal situation of the invention with the Brazilian PTO, protecting the company against undue charges and restrictions.
In certain cases, it is possible to extinguish the lawsuit by demonstrating, for example:
- That, the plaintiff’s patent application has not yet been effectively granted by the Brazilian PTO;
- That the mere expectation of right (the simple filing) does not confer a right of exclusivity before third parties;
- That, the patent application may even have been refused by the official organization and be pending appeals;
- The consequent lack of interest in acting by the plaintiff to claim rights that he does not yet legally have.
With adequate technical grounds, the process can be terminated early. As an example, there is a recent real case in which, after the specialized legal action of the CNV team, the lawsuit was totally extinguished:
Success Story: From the Prosecution of Copying to the Termination of the Action
- The initial conflict: The plaintiff of a Utility Model patent application entitled “MÁQUINA ESCAVADORA COM ACOPLAMENTO EM BALSA” sued the defendant company, claiming that it manufactured machinery identical to its invention and demanding compensation.
- The defense strategy: In the defense, the technical defense demonstrated in detail the real situation of the plaintiff’s case before the Brazilian PTO: the equipment pointed out had been refused by the official organization and was merely in the appeal phase.
- The Judge’s decision: Accepting the defense’s theses, the Judge understood that the plaintiff lacks interest in acting. In order for its authorization to be necessary for third parties to use similar equipment, it is essential that it be granted the definitive ownership of the patent for exclusive use, which had not yet occurred.
- The outcome: With the performance focused on the rules of industrial property, the lawsuit was dismissed without resolution of the merits, freeing the defendant company from any sanction or payment of indemnity.