What to Do If You Believe Your Patent is Being Infringed
You may have set up a Google alert and have been alerted that a product very similar to the one you patented hit the web; you may have been notified of the infringement by your legal department, or you may have just, randomly, stumbled upon it. In all the cases, you suspect your patent has been infringed. So, what are the next steps?
First step: Cease and desist letter
While it is not compulsory – neither under Brazilian law nor under Argentinian law – to send a cease and desist letter in order to commence the proceedings, this is the most common route. Sometimes a cease and desist letter is enough to convince the infringer to withdraw the infringing product and reach an extrajudicial settlement.
Time for a legal action
Shall the letter fail, the next step is a legal action filed by an attorney. In Brazil, a patent infringement constitutes both a tort and a criminal conduct. Patent infringement actions, for both civil and criminal proceedings, are filed before state courts. With the exception of some states, like Rio de Janeiro or São Paulo, there are no specialized courts for industrial property matters. In Argentina, under Patent Law No 24,481/96, the patent owner is entitled to both civil and criminal actions, filed before the Federal Courts. The claim must be substantiated in the specifications and define precisely the subject matter that is the object of the protection. It can be integrated with drawings.
Preliminary injunction: a timely safeguard against infringements.
Before the civil trial is concluded, the judge can grant a preliminary injunction: this means that the defendant will not be permitted to sell the infringing goods until the proceedings are terminated. According to Sec. 209 of the Brazilian IP Law, an injunction is granted if two elements recur: the fumus boni juris, meaning that there is a good chance that the defendant is infringing the plaintiff’s right; and the periculum in mora, meaning that there is the risk of imminent and irreparable harm to the rights of the plaintiff. In Argentina, the requirements are similar but stricter: the plaintiff must prove there is a reasonable likelihood that the patent, should its validity be challenged, shall be declared valid. An expert must be appointed by the judge and the preliminary injunction is not usually granted inaudita altera parte, unless there is a significant risk of evidence being destroyed. The court also evaluates, before granting an injunction, the harm caused to the plaintiff’s right and the potential harm that the alleged infringer may suffer in case the measure is granted by mistake. A patent infringement action before Argentina Courts of First Instance can take between three and five years, while Brazil between two and three years. In many cases the injunction is the only way you can effectively protect your rights before a judicial decision.
What are the remedies?
Finally, if the civil proceedings terminated with a decision which is favourable to you, as the patent owner, the Court would order the cessation of the infringement, the destruction of all products involved in the infringement and the recovery of all damages and lawyers’ fees. As per the criminal proceedings, in Brazil, the infringer can be sentenced to prison up to one year or to the payment of fines. Similar remedies are provided in Argentina, where the infringer who is found liable must stop infringing the patent owner’s right and must pay for damages and lawyers’ fees. When it comes to criminal responsibility, the Argentine Patent Law provides the infringer’s imprisonment of from 6 months to 3 years and with a fine.