ACQUISITION OF EVIDENCE IN PATENT LITIGATION:

A BRAZILIAN PERSPECTIVE*

Daniela Bessone

1. Brief Overview of Patent Infringement in Brazil

In Brazil, the protection to Intellectual Property is one the fundamental rights and

guarantees enshrined in the Federal Constitution (article 5, XXIX). In the infra-

constitutional level, the Industrial Property Act (Federal Law 9,279/1996)1 governs the

matter in both civil and criminal spheres. Brazil is also a member of the Paris Convention

for the Protection of Industrial Property2, of the Patent Cooperation Treaty (PCT)3, and of

the General Agreement on Tariffs and Trade (GAAT), including the Trade-Related

Aspects of Intellectual Property Rights (TRIPS) Agreement4. As to trademarks, Brazil is

not yet a member of the Madrid Protocol, but the Country’s accession is expected to be

formalized soon.

In what concerns the procedural aspects of Intellectual Property litigation, including

evidence taking, the provisions of the Code of Civil Procedure (“CCiP”) and of the Code of

Criminal Procedure (“CCrP”) are of the utmost relevance.

After an introduction to civil and criminal aspects of patent infringement in Brazil,

this presentation will focus on evidence taking mechanisms available in the Country for

patent litigation; on the possibilities of obtaining evidence in Brazil for litigation outside

Brazil; and on the use, in Brazil, of evidence obtained abroad.

* Presentation made at the 41st Congress of the International Association for the Protection of Intellectual Property – AIPPI, Boston, September 2008. 1 Translations of the Brazilian IP Act into English, Spanish, French and German are available at the website of the “Instituto Nacional da Propriedade Industrial” (the Brazilian PTO): http://www.inpi.gov.br/menu-esquerdo/patente/pasta_legislacao. 2 Brazil was among the 14 original signatories of the UPC, in 1883; its current version, resulting from the Stockholm revision, has been in force in Brazil since 1975, except for articles 1 to 12 and 28, which entered into force in 1992. 3 In force since 1978. 4 In force since 1994.

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1.1. Civil Aspects of Patent Infringement

Subject to the legal exemptions5, the patentee is granted the right to prevent third

parties from (i) manufacturing, (ii) using, (iii) offering for sale, (iv) selling, or (v) importing

for such purposes, without the patentee’s consent, a product that is the subject of a

patent; or a process or product directly obtained from a patented process (IP Act, article

42). The patentee is further granted the right to prevent third parties from contributing to

the practice of such acts (IP Act, article 42, paragraph 1).

Both the IP Act (article 209, paragraph 1)6 and the Code of Civil Procedure

(articles 273; 287; and 461) confer to the patentee the possibility of requesting a

preliminary injunction, inaudita altera parte (ex-parte), for the immediate cessation of the

infringing activity, under a daily penalty fine applicable in case of non-compliance, as well

as for the complete seizure of the infringing articles, provided that the patentee is able to

demonstrate, prima facie, the occurrence of the legal requirements for an anticipatory

measure of this kind: fumus boni iuris, i.e, a strong likelihood of success on the merits;

and periculum in mora, i.e., risk of irreparable harm (or a harm that may turn out to be

extremely difficult to be remedied) to the plaintiff if an injunction is not granted.

5 IP Act, Article 43: “The provisions of the previous article [i.e., patent infringement] do not apply: I - to acts performed by unauthorized third parties privately and without commercial purposes, provided that they do not result in prejudice to the economic interests of the patentee; II - to acts performed by unauthorized third parties for experimental purposes, related to studies or to scientific or technological research; III - to the preparation of a medicine according to a medical prescription for individual cases, executed by a qualified professional, as well as to a medicine thus prepared; IV -to a product manufactured in accordance with a process or product patent that has been placed on the internal market directly by the patentee or with his consent; V - to third parties who, in the case of patents related to living matter, use, without economic purposes, the patented product as the initial source of variation or propagation for obtaining other products; and VI - to third parties who, in the case of patents related to living matter, use, place in circulation or commercialize a patented product that has been introduced lawfully onto the market by the patentee or his licensee, provided that the patented product is not used for commercial multiplication or propagation of the living matter in question”. IP Act, Article 45 – “A person that, in good faith, prior to the date of filing or of priority of a patent application, exploits its object in this country will be guaranteed without onus the right to continue the exploitation, in the previous form and conditions. Paragraph 1 - The right conferred under the terms of this article can only be ceded by transfer or leasing, together with the business of the undertaking, or the part thereof that has direct relation with the exploitation of the subject matter of the patent. Paragraph 2 - The right to which this article refers will not be guaranteed to a person who had knowledge of the subject of the patent due to disclosure under the terms of article 12, provided that the application was filed within 1 (one) year from the disclosure”. 6 Article 209, caput, relates to the violation of industrial property rights and acts of unfair competition “that are not provided for in this law (the IP Act)”. However, paragraph 2 of article 209 obviously relates to the violation of industrial property rights provided for in the IP Act: “§ 2 - In the case of flagrant reproduction or imitation of a registered mark, the judge may determine the seizure of all the merchandise, products, objects, packages, labels and others that carry the falsified or imitated mark”. Thus, it is more than reasonable to say that also paragraph 1 should apply not only to the acts of violation of industrial property rights that are not provided for in the IP Act, but also to those that are provided for in the IP Act.

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When the allegedly infringed patent refers to a process, the burden of proof lies

with the defendant: the defendant must produce evidence that the relevant product was

obtained through a manufacturing process different from the one protected by the patent

(IP Act, article 42, 2nd paragraph). Nevertheless, a preliminary injunction will not be

granted if the patentee is not able to demonstrate strong likelihood of the infringement.

The validity of the patent is presumed, meaning that the patentee is not required to

produce prima facie evidence thereof; this is, of course, a rebuttable presumption. The

defendant may overcome it with evidence to the contrary: the IP Act expressly admits that

the invalidity of the patent be alleged as a matter of defense (IP Act, articles 56,

paragraph 1, and 205)7. The periculum in mora (irreparable harm) is also generally treated

by the courts as presumed: if the patentee is able to produce clear evidence of ownership

of the patent, as well as of the infringement, the burden of proof for irreparable harm is

significantly reduced. Again, this is a rebuttable presumption that may be overcome under

certain (exceptional) circumstances.

It is important to note that the court may subject the granting of an injunction to the

posting, by plaintiff, of a bond or other acceptable guarantee to secure the indemnification

for damages that may be sustained by the defendant as a consequence of the execution

of the provisional order (seizure and/or injunction), should the claim be rejected on the

merits (IP Act, article 209, paragraph 1).

The licensee may be invested by the patentee with full powers to take the required

actions aimed at preventing infringement (IP Act, article 61). But, for this purpose, the

license agreement must have been previously recorded with the Instituto Nacional da

Propriedade Industrial – INPI (the Brazilian PTO), such recordation being a condition to

the effectiveness of the agreement as regards third parties (IP Act, article 62).

Obviously, the patentee is also entitled to claim damages for unauthorized use of

the patent (IP Act, article 208), that shall be quantified by the adoption of the most

favorable criterion to the patentee among the following: (i) the benefits that the patentee

would have enjoyed if the infringement had not occurred; (ii) the benefits the infringer

enjoyed with the violation; or (iii) a reasonable royalty (IP Act, article 210).

7 But the incidental declaration that the patent is null and void is effective only between the parties, for the purpose of terminating the claim with the resolution of the merits. The cancellation of the patent can only be achieved through an independent cancellation action, filed before the Federal Courts against the patent owner and the INPI (PTO) (IP Act, article 205).

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The right to claim damages shall be retroactive to the date of publication of the

patent (IP Act, article 44), unless the plaintiff can prove that the infringer acquired

knowledge of the contents of the patent application prior to its publication, in which case

damages will begin accruing from the commencement of the exploitation thereof (IP Act,

article 44, paragraph 1).

The statute of limitation applicable to claims for damages arising from the

infringement of IP rights is 5 years.

1.2. Criminal Aspects of Patent Infringement

As anticipated, patent infringement is not only a tort in Brazil, but may also qualify

as a criminal offense, punished with detention or a fine:

Article 183 - A crime is committed against a patent of invention or a utility model patent by a

person who:

I - manufactures a product that is the subject matter of a patent of invention or a utility

model patent, without authorization of the patentee; or

II - uses a means or process that is the subject matter of a patent of invention, without

authorization of the patentee.

Penalty - detention of 3 (three) months to 1 (one) year, or a fine.

Article 184 - A crime is committed against a patent of invention or a utility model patent by a

person who:

I - exports, sells, exhibits or offers for sale, maintains in stock, hides or receives, with

a view to use for economic purposes, a product manufactured in violation of a patent of

invention or of a utility model patent, or that is obtained by a patented means or process; or

II - imports a product that is the subject matter of a patent of invention or of a utility model

patent or is obtained by a means or process patented in this country, for the purposes

mentioned in the previous item, and that has not been placed on the external market

directly by the patentee or with his consent.

Penalty - detention of 1 (one) to 3 (three) months, or a fine.

Article 185 - Supplying a component of a patented product, or material or equipment

for carrying out a patented process, provided that the final application of the component,

material or equipment necessarily leads to the exploitation of the subject matter of the

patent.

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Penalty - detention of 1 (one) to 3 (three) months or a fine.

Article 186 - The crimes of this Chapter are committed even if the violation does not affect

all the claims of the patent or if it is restricted to the use of means equivalent to the subject

matter of the patent.

Given the fact that a criminal offense is always also considered a civil wrong, giving

rise to damages, the only relevant distinction between offenses that qualify as patent

infringement of a civil nature and those of a criminal nature refers to the “importation of

products that have been placed on the external market directly by the patentee or with his

consent” (parallel import), which is generally considered a tort8, but not a criminal offense.

The IP Act provides for the increase of the penalties of detention applicable to

crimes against patents, by one third to one half, when the infringer is or was a

representative, proxy, agent, partner or employee of the patentee or registrant or, further,

of his licensee. As to the monetary penalties, they shall be set at a minimum of 10 and a

maximum of 360 daily-fines, and may be increased or reduced, by as much as 10 times,

in view of the personal situation of the infringer and the magnitude of the advantage

obtained (IP Act, article 197).

2. Evidence Taking Mechanisms Available in Brazil

Brazil is a civil law jurisdiction, whose procedural system is strongly rooted in the

European continental tradition. As such, Brazilian civil procedure does not contemplate

pre-trial discovery (or disclosure) typical of common law jurisdictions, such as the United

Kingdom and the United States. In other words, prior to the beginning of the legal

proceeding, the parties are neither required to provide each other with information, nor to

disclose to each other the content of any documents; each of them is expected to gather

its own evidence by its own means. The complaint must be substantiated with the

essential documentary evidence available to the plaintiff at the time of the filing, while the

defendant must submit along with the defense the documentary evidence destined to

prove the allegations made therein, although both parties are entitled to submit at a later

8 As a general rule, parallel imports are not allowed in Brazil. There is, however, a significant exception to this general rule, set out in IP Act, section 68, paragraph 4: “If the patent is exploited in Brazil by means of imports, as well as in the case of the imports referred to in the preceding paragraph [paragraph 3 refers to compulsory licenses], third parties shall be also allowed to import a product manufactured according to a process patent or a product patent, as long as such product had been introduced into the market directly by the patentee or with the patentee’s consent.” In other words, parallel imports are not considered unlawful if the patented product is not manufactured in Brazil, but rather imported by the patentee or with the patentee’s consent.

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time additional documentary evidence (especially with the purpose of proving facts

occurring after the filing of the suit or contradicting the evidence submitted by the adverse

party) (CCiP, articles 396 and 397).

Under the Brazilian Code of Civil Procedure, “[a]ll legal means of evidence, as

well as those that are morally legitimate, even if not specified in this Code, shall be

considered able to prove the truth of the facts on which the claim or the defense is

grounded” (CCiP, article 332). The means of evidence expressly mentioned in the Code

are (i) the parties’ inquiry by the judge; (ii) confession; (iii) exhibition of documents or

objects that are in the possession of the adverse party or of a third party; (iv) documentary

evidence; (v) witnesses’ testimony; (vi) technical expertise; and (vii) judicial inspection

(carried out in person by the judge).

Each of those means of evidence has many peculiarities, the analysis of which is

unfortunately beyond the scope of this presentation9. But a couple of remarks are worth

making:

(a) As to the exhibition of documents or objects, the party or the third party shall be

exempted from disclosing documents or objects that (i) may result in the party’s or third

party’s or their relatives’ dishonor, or that may bring a risk of criminal charges being filed

against them; or (ii) are protected by a duty of confidentiality of a professional nature;

(CCiP, article 363, III and IV)

(b) As to documentary evidence, it should be noted that declarations contained in

private affidavits, which are very usual in common law jurisdictions, are presumed true as

regards the person who signed the affidavit; but the affidavit does not suffice as evidence

of the facts therein declared, which must be proved by other means (CCiP, article 368).

(c) As to witnesses’ testimony, the formalities of Brazilian Law are substantially

different from those prevailing in common law countries: for instance, witnesses may not

be asked to give their testimony under oath, although they must undertake to tell the truth

and shall be warned by the judge that giving false information qualifies as a criminal

offense (CCiP, article 415); the attorneys for the parties are not allowed to directly

question the witnesses, as examination and cross-examination are controlled by the judge

9 For an broader analysis of the Brazilian legal system, see “Transnational Litigation: A Practioner’s Guide”, John Fellas Editor, Hughes, Hubbard & Reed LLP, New York, New York, Oceana Publications, Inc. NY, volume 1, BRAZIL, by VARGAS, Manoel, LIRA, José-Ricardo Pereira, MARIANI, Natalie Sequerra, and ALMEIDA, Ricardo Ramalho, LOBO & IBEAS Rio de Janeiro, issue of October 2003.

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(CCiP, article 416), who may (and often does) rephrase the questions made by the

attorneys, as he/she deems appropriate, in order to avoid the inducement of the witness in

error; witnesses are heard separately from each other and successively, so that a given

witness does not listen to another witness’s testimony (CCiP, article 413); the witness

shall be exempted from testifying about facts that may bring a serious harm to

himself/herself, or to his/her family, or about facts protected by a duty of confidentiality of

a professional nature (CCiP, article 406); oral evidence may be recorded in audio or video

(CCiP, article 417), but it is not mandatory, as the judge may also, at his/her discretion,

dictate the answers to a court clerk (not always verbatim).

(d) As to technical expertise, which may include examination, inspection and/or

assessment, the expert, who must be a qualified professional (CCiP, article 145,

paragraphs 1 to 3) well known by the judge, is not appointed by any of the parties, but

rather by the court (CCiP, article 421); but the parties are entitled to appoint their own

“technical consultants”, to follow up the expert’s work and to comment (or challenge) the

expert’s report (CCiP, article 421, paragraph 1, I). If a given technical expertise is

multidisciplinary, the court may appoint as many different professionals as necessary to

carry out the work, the same applying to the parties’ technical consultants.

Courts shall give to each piece of evidence, either produced in Brazil or

abroad, the relevance and weight they deem adequate under the concrete

circumstances of the case. This is a consequence of the so-called “principle of judges’

free convincement”, meaning that judges are not bound by any particular piece of

evidence, including confession, technical expertise reports, etc. (CCiP, articles 131 and

436). But court decisions must clearly state the grounds thereof, including those related to

the findings of fact (Federal Constitution, article 93, IX, and CCiP, article 458, II).

As a general rule, evidence shall be produced in the course of the legal

proceeding, along with the complaint/answer, as seen above, and after the judge

determines the disputed facts (which will depend on the allegations made by the

defendant in the answer and on the plaintiff’s comments to the defendant’s allegations).

However, the IP Act, the Code of Civil Procedure and the Code of Criminal Procedure

provide for a range of very effective measures a patentee may rely on for the purpose of

taking evidence before the filing of an infringement action, within the scope of the so-

called preparatory proceedings, summarized in 2.1 and 2.2 below.

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2.1. Taking Evidence in the Criminal Sphere

The Brazilian Code of Criminal Procedure contains a chapter entirely devoted to

Intellectual Property crimes, which are crimes of private action10, meaning that the

relevant legal proceedings shall be commenced upon the submission of a claim by the

injured party, rather than by the initiative of the Public Attorney’s Office (IP Act, article

199).

Two specific conditions must be fulfilled in order that a private criminal claim is

admitted: the proof of ownership of the IP rights (in the case of patent infringement, the

submission of the letter patent) and, whenever vestiges of the crime have been left, the

analysis thereof by expert(s) appointed by the court (CCrP, articles 525 and 526).

Accordingly, before taking any other judicial measure for the criminal prosecution

of the infringer, the patentee shall file a search-and-seizure preparatory action with a

criminal court (i) demonstrating ownership of the patent; (ii) stating the reasons for which

the patentee believes a patent infringement has been occurring; and (iii) requesting a

judicial order, ex-parte, for the search-and-seizure of the objects relevant to the

infringement.

Under the Code of Criminal Procedure, the search-and-seizure measures shall be

carried out by two experts appointed by the judge (not by the plaintiff), who shall verify the

existence of grounds for the seizure (CCrP, article 527). The experts must submit their

report to the court within a 3-day term from the inspection, irrespective of whether the

seizure has occurred or not (CCrP, article 527).

Regarding crimes against process patents, the IP Act contains a provision under

which “During execution of a search-and-seizure measure, with respect to a crime against

a process patent, the court bailiff will be accompanied by an expert who will verify,

preliminarily, the existence of the criminal offense, the judge being able to order the

seizure of products obtained by the infringer using the patented process” (IP Act, article

201). It is not entirely clear whether the IP Act was meant to derogate the Code of

Criminal Procedure as to the number of experts that shall carry out, along with the court

10 Except for one single case, which is not relevant to this presentation: the crime specified in the IP Act, article 191: “Reproducing or imitating wholly or in part, in a manner that may lead to error or confusion, armorial bearings, crests or official public distinctions, be they national, foreign or international, without the necessary authorization, in a mark, title of establishment, commercial name, insignia or advertising sign, or using such reproductions or imitations for economic purposes”.

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bailiff, the search-and-seizure measures: one expert (an expert), instead of two. Anyway,

this provision of the IP Act applies to process patents only. In view of the technical nature,

often complex, of patent infringement, it is advisable that plaintiffs ask the court to appoint

two experts for this task.

If, upon inspection, the experts conclude that there were no grounds for the

seizure, the plaintiff may challenge the experts’ report and the judge may order the

seizure to be made, in his/her discretion, despite the experts’ opinion to the contrary

(CCrP, article 527, sole paragraph).

The next step is the confirmation of the experts’ report by the criminal judge and

the criminal action shall subsequently be filed within a 30-day term from such confirmation

(CCrP, articles 528 and 529)11.

In case of industrial or commercial premises legally organized and functioning

publicly, the preliminary measures will be limited to the search-and-seizure of the

envisaged objects and documents, while the interruption of the defendant’s lawful

activities is not permitted (IP Act, article 203). What if the defendant is not engaged in any

activities other than the unlawful ones? The only possible answer to this question would

be that this provision should not apply in this case.

The plaintiff shall be liable before the defendant for damages arising out of a

search-and-seizure measure requested in bad faith, spirit of rivalry, mere caprice or gross

error (IP Act, article 204).

Although conceived as a preparatory proceeding of criminal actions, the search-

and-seizure procedure governed by the Code of Criminal Procedure is often used as a

means to gather evidence to substantiate civil actions, aiming at the immediate cessation

of the infringement, by means of an injunction, as well as damages. The criminal search-

and-seizure preparatory action has the advantage of being always an ex-parte

proceeding. Besides, it is more than a right granted to the patentee, being a true burden

on the patentee, a condition for the admissibility of the criminal private action; thus,

criminal judges tend to grant the order in the presence of the proof of ownership of the IP

rights and signs of the criminal offense.

11 Prevailing case-law understands that the 30-day term shall be counted from the date on which the plaintiff has been notified of the confirmation of the experts’ report by the criminal judge, rather than from the date of the confirmation itself.

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2.2 Taking Evidence in the Civil Sphere

The Brazilian Code of Civil Procedure (“CCiP”) provides for a number of

preparatory measures that can be extremely useful in gathering evidence for Intellectual

Property litigation, summarized below.

(a) Introductory Note on the Scope of Cautelar12 Proceedings

Cautelar proceedings were originally conceived as conservative measures, i.e., to

guarantee the effectiveness and enforceability of the final decision to be rendered on the

merits in the so-called main action. Technically, the purpose of the cautelar proceedings

has never been anticipating, in favor of the plaintiff, the effects of the final decision on the

merits, thus reversing in favor of the plaintiff the burden of time, but only conserving

certain factual or legal circumstance as required to secure the utility of the final decision

on the merits: seizing the cattle before it becomes a steak.

A typical matter for a cautelar proceeding would be the anticipated production of

evidence that could be jeopardized by the lapse of time, either by virtue of natural causes

– if a witness to be heard is too old or seriously ill, for example – or by reasons attributable

to the adverse party – if documents or objects may be destroyed before they can be

produced and/or analyzed in the scope of a technical expertise (CCiP, article 420).

However, protection to IP rights has always claimed rapid and effective remedies

to fight infringement, preferably by surprise. In the past, the lack of specific courses of

action that could provide IP owners with the indispensable speed in enforcing their rights,

especially concerning the immediate cessation of the infringement, the cautelar

proceedings ended up by being widely used by patentees for obtaining the total or partial

anticipation of the very decision sought on the merits, i.e., an order for the seizure of the

totality of the infringing items and for the immediate cessation of the infringement. Such

flexible use of cautelar proceedings was not entirely technical, but generally accepted by

the prevailing case-law, on the ground that it filled a gap in Brazilian procedural law.

12 “Ações cautelares”, in Portuguese. In the absence of an exact translation into English, the original Portuguese expression was adopted.

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This scenario changed radically in 1994, upon deep modifications introduced in the

Code of Civil Procedure13, especially as regards the possibility of total or partial

anticipation of the envisaged decision on the merits, always subject to the demonstration,

by the plaintiff, of strong likelihood of success on the merits and risk of irreparable harm

(or a harm that may turn out to be extremely difficult to be remedied). Such changes also

included a variety of measures now expressly made available to the judge for the purpose

of obtaining specific performance from the defendant or, if specific performance is

unfeasible, adopting alternative measures that allow for equivalent results to those that

would have been otherwise obtained by specific performance, including, e.g., the seizure

of the totality of the infringing items (CCiP, articles 273 and paragraphs; article 287 and

461 and paragraphs).

As a result of said changes in Brazilian procedural law, the cautelar proceedings

were restored to their original function: to preserve a factual or procedural situation, as

necessary for the future effectiveness of the decision on the merits, including evidence

taking14.

(b) General Provisions on Cautelar Proceedings (articles 796 to 812)

Under the cautelar proceeding, which can be either preparatory or incidental and is

generally dependent on the main action, judges are granted broad powers to order a

variety of measures, as they deem appropriate and necessary to prevent one of the

parties from causing irreparable harm to the rights of the other party before or during the

course of the main action (CCiP, articles 796 to 799).

Ex-parte orders may be and are often granted in cautelar proceedings, when it is

likely that the defendant, being first summoned, will frustrate the execution thereof (CCiP,

article 806).

Cautelar orders are designed to be effective during the entire duration of the main

action, unless previously revoked or modified, which may happen at any time (article 807).

13 By Federal Law no. 8,952/1994. 14 If the plaintiff, under a request for the anticipation of the envisaged decision on the merits, is actually requesting a provision of cautelar nature, the judge may grant the relevant cautelar provision, provided that the applicable legal requirements are fulfilled (CCiP, article 273, paragraph 7). But the vice versa is not necessarily true, as the law does not provide for the admissibility of cautelar proceedings in lieu of a request for the anticipation of the envisaged decision on the merits.

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But the effectiveness of the cautelar order shall automatically cease (i) if the main action is

not filed within a 30-day term counted from the execution of the cautelar order; (ii) if the

cautelar order is not executed within a 30-day term counted from the granting thereof; or

(iii) if the proceeding is terminated, either with or without prejudice (CCiP, article 808).

The rejection of a request for a cautelar order does not hinder the filing of the main

action, and shall not have any influence on the judgment of the merits thereof, except

when the cautelar proceeding has been terminated in view of a statute of limitation

applicable to plaintiff’s claim (CCiP, article 810).

The plaintiff shall be liable for damages caused to the defendant with the execution

of the cautelar order if: (i) the decision on the merits eventually rendered in the main

action is unfavorable to the plaintiff; (ii) the plaintiff does not take the measures required

for the summoning of the defendant within a 5-day term, whenever ex-parte orders have

been granted; (iii) the effectiveness of the cautelar order ceases; or (iv) a statute of

limitation is considered applicable by the judge in the cautelar proceeding (CCiP, article

811).

Besides the general and broad cautelar power granted to the judge, the Code of

Civil Procedure also provides for some specific cautelar procedures, described below.

(c) Search-and-Seizure Action (CCiP, articles 839 to 843)

Within the scope of a search-and-seizure action, the judge may issue an ex-parte

order for the search-and-seizure of objects15, including documents (CCiP, article 839).

In the complaint, the plaintiff shall state the grounds for the requested measure

and the place in which the objects to be inspected/seized are located (CCiP, article 840).

The plaintiff is not required to produce preliminary evidence of those facts: the mere

statement of the circumstances that lead to that conclusion shall suffice at this point.

Whenever the dispute involves technical matters, as almost always happens in

patent litigation, it is most advisable that the plaintiff substantiates the complaint with an

expert report, even if preliminary and subject to reservations. In any case, the judge may

schedule a justification hearing, to be held ex-parte and under secrecy of justice, if he/she

15 This specific proceeding is also applicable to the search and seizure of individuals, but, of course, not in IP litigation.

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deems it necessary to get additional evidence of the facts alleged by the plaintiff (such as

the inquiry of an expert witness) (CCiP, article 841).

The order shall be executed by two court bailiffs, accompanied by two witnesses

(CCiP, article 842), who have the right to force their way on to defendant’s premises, in

case of resistance. There is a provision specifically referring to the seizure of copyright

counterfeits, under which the presence of two experts appointed by the judge is

mandatory; before the seizure, those experts shall confirm the occurrence of the

infringement (exactly as provided for by the Code of Criminal Procedure, regarding a

criminal search-and-seizure preparatory action). In practice, this provision originally

conceived for copyright infringement has been often adopted also as regards patent

infringement.

Technically, this search-and-seizure cautelar proceeding should be used for the

purpose of gathering evidence, and therefore, the court bailiffs and experts should

apprehend only a sufficient quantity of samples of the infringing items, and all other

elements connected with the infringing activity, in order to substantiate the main action.

However, it is not uncommon that, in practice, patentees resort to the search-and-seizure

action aiming at the seizure the totality of the allegedly infringing articles found at the

defendant’s premises. Search-and-seizure cautelar orders of this kind are often revoked

by the appellate courts, on the ground that the assessment of the alleged infringement is a

highly technical issue that requires the full production of evidence, with the observance of

the adversarial system, which is not feasible at the ex-parte preliminary stage of the

dispute.

As mentioned above apropos of the criminal proceeding, the preliminary measures

to be carried out in industrial or commercial premises legally organized and functioning

publicly shall be limited to the search-and-seizure of the infringing products, since it is

impermissible to interfere with their legal activities (IP Act, article 203).

If information of a confidential nature, such as industrial or trade secrets, is

revealed during the search-and-seizure proceedings, or at any other time during the

course of the action, the judge must determine that the action continues under secrecy of

justice, and the use of such information by the other party for “any other purposes” is

expressly forbidden (IP Act, article 206). Despite the specificity of the provision, it is more

than reasonable to sustain that such prohibition relates to the use of the information by the

plaintiff for industrial/commercial purposes and/or to the disclosure of the confidential

information to third parties, but not to the use thereof by the plaintiff for the purpose of

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producing evidence in other parallel patent litigation between the same parties, including

proceedings in different jurisdictions.

(d) Exhibition Proceeding (CCiP, articles 844 and 845)

In an exhibition proceeding, the judge may issue an ex-parte order for the judicial

exhibition of: (i) an object that the plaintiff has the right to know of; (ii) a document of

common interest to the parties (e.g., a contract between them); (iii) corporate documents

of the defendant, in specific cases set out by the law (CCiP article 844).

The defendant shall be exempted from disclosing documents or objects that

(i) may result in the defendant’s (or, in case of individuals, their relatives’) dishonor, or that

may bring a risk of criminal charges being filed against the defendant; or (ii) are protected

by a duty of confidentiality of a professional nature (CCiP, article 363, III and IV).

The exhibition proceeding is the appropriate remedy for situations in which all that

the plaintiff needs and desires is the disclosure by the defendant, before the courts, of

certain objects and/or documents, in order to determine their characteristics and content

and to prevent their modification or destruction. But, in this case, the relevant object

and/or document remain in the defendant’s possession. Thus, the action is the adequate

remedy for specific cases in which it is not necessary to seize objects or documents: as

long as such objects or documents are produced and examined by the court, they may be

returned to the defendant.

Doctrine and case-law make a distinction between two different types of exhibition

proceedings. The first type is the so-called satisfying exhibition proceeding, in which the

plaintiff aims at obtaining data in order to decide whether or not to bring a future claim

against the defendant. In view of the characteristics of the objects and/or documents that

have been exhibited, plaintiff may very well decide not to bring the claim. In this situation,

there is no need to demonstrate periculum in mora, i.e., risk of irreparable harm (or a

harm that may turn out to be extremely difficult to be repaired): the mere right to know and

examine the envisaged objects/documents suffices. The second type of exhibition

proceeding is the true cautelar exhibition proceeding, in which the plaintiff wishes to

conserve the evidence, i.e., to protect the evidence against modification or destruction. It

is designed to secure evidence, rather than to produce it. The plaintiff shall demonstrate

that the piece of evidence at issue is likely useful for the main action as well as the

periculum in mora, which shall be considered a fulfilled requirement in view of a

reasonable chance that the evidence may be under risk of modification or destruction.

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In the complaint, the plaintiff shall state: (i) the specifications, as completely as

possible, of the object and/or document to be exhibited; (ii) the purpose of the envisaged

evidence, setting forth the facts that relate to such document and/or object; and (iii) the

circumstances on which the plaintiff grounds the belief that the object and/or document is,

in fact, in the possession of the defendant (CCiP article 356). The defendant shall be

granted a 5-day term for the response (CCiP article 357). If the defendant keeps silent,

the facts stated by the plaintiff shall be presumed to be true and correct. If the defendant

refuses to comply with the exhibition order without an acceptable reason, a search-and-

seizure order may be issued. A third party may also be summoned to produce the relevant

object and/or document.

It is important to note that the prevailing understanding in doctrine and case-law is

that the general provision mentioned above, under which the main action shall be filed

within a 30-day term from the execution of the order rendered in the cautelar proceeding,

does not apply to the exhibition proceedings aimed at gathering evidence. The evidence

shall not preclude, i.e., it shall remain effective even if the main suit is not filed.

(e) Anticipated Production of Evidence Proceeding (CCiP, articles 846 to 851)

The anticipated production of evidence proceeding is the remedy available where

there are reasons to believe that the production of evidence of certain facts will be very

difficult or impossible during the regular course of the main action (periculum in mora).

According to the letter of the law, the evidence to be obtained under such proceeding

comprises: (i) the parties’ inquiry, (ii) witnesses’ inquiry, and (iii) technical expertise (CCiP

article 846). The case-law has been regarding those three types of evidence as mere

examples, thus admitting the anticipated production of evidence also under other

circumstances, as long as the judge is convinced that such anticipation is necessary or

advisable.

In the complaint, the plaintiff shall state the reasons for the anticipation (periculum

in mora) and shall precisely describe the facts in connection with which the evidence shall

be produced (CCiP article 848). The measure is, in principle, not admissible if the

evidence may be regularly produced in the normal course of the main action.

Under exceptional circumstances, however, doctrine and case-law have been

accepting anticipated production of evidence regardless of the occurrence of periculum in

mora, if the judge believes that it is convenient that the evidence be produced at once.

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The admissibility of such an exceptional type of anticipated production of evidence must

be determined on a case by case basis and will be grounded on general instruction

powers vested in the judge.

Technically, the anticipated production of evidence proceeding has a non-

contentious nature, meaning that the merits of the underlying dispute shall not be dealt

with in it and the defense, if any, shall be limited to the admissibility of the anticipation of

the evidence. The judge does not render a true decision, in the sense that no actual

conflict between the parties is terminated (unless the defendant challenges the

admissibility of the anticipation of the evidence under the concrete circumstances, a case

in which the decision shall be limited to this specific point), but only directs the production

of the evidence and declares the evidence produced. The evaluation of the evidence shall

not be made in this proceeding, which has the sole purpose of anticipating the production

thereof.

In view of the peculiarities of the anticipated production of evidence proceeding,

the plaintiff is not required to demonstrate a likelihood of success on the merits (fumus

boni iuris). For the same reason, the plaintiff does not have to specify the nature of the

action to be filed in the future. It is not even mandatory that the parties to the anticipated

production of evidence proceeding be the same as those parties in the main action,

although there must be a link between plaintiff and defendant, as regards the evidence to

be produced. For instance, an anticipated production of evidence proceeding can be filed

against the supplier of a component of a patented product, or the supplier of material or

equipment required for carrying out a patented process, while the main action is filed

against the patent infringer, rather than against said supplier.

Likewise the exhibition proceeding, the requirement for the filing of the main action

within a 30-day term from the execution of the cautelar decision does not apply to the

anticipated production of evidence proceeding, meaning that the evidence produced shall

remain valid, even if the main action is not filed within such term.

(f) Justification Proceeding (CCiP, articles 861 to 866)

The justification proceeding is available to whoever intends to justify the existence

of a certain fact or legal relationship, for the purpose of producing evidence thereof in a

separate action (CCip article 861). Justification consists of the inquiry of witnesses on the

alleged facts, being the interested party also allowed to submit documents (CCiP, article

863). But other means of producing evidence, such as assessment, technical expertise, or

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exhibition of objects and documents in the possession of the adverse party, are not

admitted here.

The justification proceeding is non-contentious, in the sense that the interested

party is not allowed to request that the court declares the existence/inexistence of a

certain fact or legal relationship, or orders the practice of an act by the adverse party, or

executes an order, etc.: the request shall be simply limited to the documentation of

evidence.

In this regard, it is worth stressing that the production of evidence is not the same

as the judicial declaration of the existence of the relevant fact or legal relationship. The

evidence taken by means of a justification proceeding is no more than a piece of evidence

that must be qualified and evaluated in the future by the judge in charge of rendering a

decision on the merits of the dispute (if any), who will not be bound by any previous

judgment held in the justification proceeding. Even the very existence of a fact proved in

the justification proceeding is not indisputable: other means of evidence can be used by

the adverse party to contradict it.

The adverse party must be summoned (CCiP, article 862) in order to have the

opportunity of challenging the testimony of certain witnesses, examining and cross-

examining witnesses, and reviewing the documents that may have been submitted by the

interested party (CCiP, article 864), but no defense is admitted against the justification

request itself (CCiP, article 865).

Additionally, the adverse party may not produce evidence of its own or submit

contradictory evidence in the justification proceeding; these measures are to be taken (or

not) in the main action on the merits, or in a separate justification proceeding brought by

the adverse party.

The justification proceeding shall be completed by means of an approval

(homologation) ruling, in which the judge shall not make any remarks on the merits of the

evidence produced, being limited to determining whether the applicable legal formalities

have been complied with. The files shall be subsequently delivered to the interested party

(CCiP, article 866). According to the letter of the law, it is not possible to appeal such

rulings (CCiP, article 865). However, doctrine and case-law tend to give a more flexible

interpretation to such provision, admitting that appeals be filed in certain cases (for

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example, if the trial court ruling rejects the justification request; or if it does not

homologate the evidence produced; or if it exceeds the objective limits mentioned above,

etc.).

The interested party may very well decide to never use, in the future, the evidence

obtained; it is also possible that the main action on the merits be filed not by the interested

party, but by a third party. This means that the right to obtain evidence on a certain fact,

by means of a justification proceeding, is independent of the substantive right to which the

evidence is related. The fumus boni iuris (likelihood of success on the merits) is not,

therefore, a requirement for the justification. For the same reason, the interested party

does not have to inform the court of the nature of the main action to be filed on the merits.

When filing a justification proceeding, the interested party must state the

particulars thereof, but the periculum in mora (irreparable harm or a harm that may turn

out to be extremely difficult to be remedied) is not mandatory either, as the justification

proceeding has not been designed to secure evidence, but instead to have the evidence

duly documented.

Also to the justification proceeding, the requirement for the filing of the main action

within a 30-day term is not applicable, meaning that the evidence produced shall remain

valid, even if the main action is not filed within such term.

(g) The utility and effectiveness of the proceedings briefly described above for patent

litigation, especially the search-and-seizure action, which can be combined with a request

for anticipated production of evidence, is indisputable. But the patentee must make wise

use of those remedies, to avoid being trapped by the anxiety of having the entire

production of the defendant seized at once, by means of an ex-parte order granted in a

cautelar proceeding. As mentioned above, the appellate courts tend to understand that

patent litigation is often extremely complex under a technical viewpoint, requiring an

extensive and adversarial production of evidence, incompatible with the first assessment

under which preliminary injunctions are ordinarily granted. But an order for search-and-

seizure of samples of the allegedly infringing products and documents, for the purposes of

a technical expertise, will hardly be denied by the trial court and hardly quashed by the

appellate court.

The most appropriate course of action will depend on the peculiarities of each

concrete situation and shall be determined on a case by case basis. But if the patentee

already has evidence of infringement that is strong enough to substantiate a request for

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the seizure of the entirety of the allegedly infringing articles, then the best choice will

probably be immediately filing the action on the merits, and requesting a preliminary

injunction, which, since the procedural reform of 1994, has been entirely possible in Brazil.

3. Obtaining Evidence in Brazil for Litigation in Other Jurisdictions

Generally, the gathering of evidence in Brazil for litigation in other jurisdictions is

achieved through letters rogatory for the performance of the relevant interlocutory order

rendered by the interested foreign court. Although the existence of Judicial Cooperation

Agreements between Brazil and the country of origin of the order may expedite and

facilitate the performance of the envisaged acts, such an agreement is not a requirement

for the admissibility of letters rogatory in Brazil.

But with creativity, it is possible to figure out other alternatives for gathering

evidence in Brazil directly, especially as regards evidence to be taken before the filing of

the main suit abroad.

These two aspects of the matter will be summarized below.

3.1. Letters Rogatory and Judicial Cooperation Agreements

Under the Brazilian Federal Constitution (“FC”), the effectiveness of court orders

and decisions (either interlocutory or final) rendered in other jurisdictions, including

interlocutory decisions aiming at gathering evidence in Brazil (witnesses’ testimony,

assessment, disclosure of information, technical expertise, etc.), is subject to the previous

approval of the Superior Court of Justice, the highest court in Brazil with competence to

rule on non-constitutional matters (FC, article 105, I, “i”). The approval of interlocutory

decisions is known in Brazil as “exequatur” (while the approval of final decisions is known

as “homologation”).

Interlocutory foreign decisions are necessarily submitted to the Superior Court of

Justice by means of letters rogatory issued by the judicial authority of the country of origin,

to be performed by a Brazilian federal judge. In other words, procedural acts can only be

carried out in Brazil with the intervention of a Brazilian judicial authority, after the

exequatur has been duly granted: foreign courts are not allowed to directly order

procedural acts to be performed in the Brazilian territory or to compel the testimony of

witnesses domiciled in Brazil before a foreign judge (but if the witness domiciled in Brazil

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voluntarily decides to testify abroad, Brazilian law will not interfere with the validity of the

testimony).

Letters rogatory that are offensive to the Brazilian sovereignty and public policy do

not qualify for exequatur (Introductory Law to the Civil Code, article 17). Thus, if the

discovery sought and/or the means of producing evidence are incompatible with basic

principles of Brazilian law, the exequatur may be denied.

The proceeding applicable to the exequatur is currently set out by Resolution of

the Superior Court of Justice no. 9, of May 4, 2005. The adverse party shall be summoned

to oppose the exequatur in a 15-day term (Res. 9, article 8). The only valid grounds to

oppose the exequatur are those relating to the authenticity of the relevant documents, the

interpretation of the actual meaning of the foreign decision and the compliance with the

procedural requirements applicable in Brazil (Res. 9, article 9).

Resolution no. 9 introduced in Brazilian Law an extremely important innovation:

“The measures required by means of a letter rogatory may be carried out ex-parte,

when the prior summoning of the interested party may result in the ineffectiveness

of the international cooperation” (Res. 9, article 8, sole paragraph). Ex-parte measures,

the relevance of which is undeniable, had never been admitted before by the case-law of

the Supreme Court.

After the exequatur is granted, the letter rogatory shall be sent to a Brazilian

federal judge for the execution of the order (Res. 9, article 13), which shall comply with the

formalities of the Brazilian procedural law (for example, as regards the testimony of

witnesses or the production of a technical expertise) and with the substantive law of the

country of origin. The federal judge in charge of the performance of the order cannot

oppose to it, nor can he/she extend or restrict the envisaged act.

Brazil is not a party to the Hague Convention on Taking of Evidence Abroad in

Civil or Commercial Matters (Hague, March 18, 1970). The Country is a party to the Inter-

American Convention on the Taking of Evidence Abroad (Panama, January 30, 1975) and

to the Additional Protocol to said Convention (La Paz, May 24, 1984), but none of them

have been ratified by the Brazilian Government yet and, therefore, are not effective in

Brazil.

As regards civil and commercial matters, Brazil entered into bilateral Judicial

Cooperation Agreements with Argentina, Bolivia, Chile, Spain, France, Italy, Portugal, and

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Uruguay. Brazil is also a member of multilateral Judicial Cooperation Agreements with the

MERCOSUR16 countries – Argentina, Brazil, Paraguay and Uruguay –, and with the

Organization of American States (OAS)17 countries – Chile, Ecuador, USA, Guatemala,

Mexico, Panama, Paraguay, Peru, Uruguay and Venezuela.

Except as otherwise expressly authorized by an international treaty, foreign

interlocutory orders that demand coercive execution in Brazil are not acceptable and the

relevant letters rogatory do not qualify for exequatur. Coercive execution measures are

only available for final decisions, which are also subject, as mentioned above, to the

approval (homologation) of the Superior Court of Justice. The case-law of the Brazilian

Superior Courts has always been extremely strict on that point. Search-and-seizure

orders, for example, would not be admitted in most of the cases; but the seizure of

samples is in theory possible, if the rogatory letter relates to a technical expertise to be

carried out in Brazil.

In this respect, it should be mentioned that Brazil is not a party to the Inter-

American Convention on Execution of Preventive Measures (Montevideo, May 8, 1979).

But the Country is a party to the Cautelar Measures Protocol, also known as Ouro Preto

Protocol (“OPP”), which provides for the enforceability in each of the signatory countries

(Argentina, Brazil, Paraguay and Uruguay) of cautelar measures rendered by the

Judiciary of another signatory country.

Under the Ouro Preto Protocol, the admissibility of the cautelar measures among

the MERCOSUR countries shall be governed by the law of the country of origin of the

order, while the execution thereof shall be governed by the law of the country of

performance (OPP, articles 5 and 6). But also here, it is required that a letter rogatory be

issued and submitted to the Superior Court of Justice, for exequatur purposes. As regards

other countries that are not members of the MERCOSUR, not even this possibility is

available.

16 The Las Leñas Protocol, Signed on June 27, 1992; approved by Legislative Decree no. 55, of April 19, 1995; promulgated by Presidential Decree no. 2067, of November 12, 1996. The Ouro Preto Protocol, Signed on December 16, 1994; approved by Legislative Decree no. 192, of December 15, 1995; promulgated by Presidential Decree no. 2626, of June 15, 1998; effective since April 18, 1997. 17 Interamerican Convention on Letters Rogatory in civil and commercial matters, signed on January 30, 1975; approved by Legislative Decree no. 61, of April 19, 1995; promulgated by Presidential Decree no. 1899, of May 9, 1996; Additional Protocol to the Interamerican Convention on Letters Rogatory in civil and commercial matters, signed on May 8, 1979; approved by Legislative Decree no. 61, of April 19, 1995; promulgated by Presidential Decree no. 2022, of October 7, 1996.

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From what has been described (in a nutshell) above, it is clear that the traditional

means of taking evidence in Brazil for litigation in other jurisdictions are hardly

reconcilable with the speed-surprise factors, which are extremely important in IP litigation.

Even if the exequatur proceedings can be expedited by virtue of Judicial Cooperation

Agreements, and even in view of the possibility of ex-parte measures being granted by the

Superior Court of Justice in exequatur proceedings, the fact is that the issuance of a letter

rogatory and the bureaucratic steps for the exequatur proceeding can easily take much

longer than the patentee can wait without sustaining irreparable harm.

3.2. Preparatory Proceedings Filed Directly in Brazil

A foreign party that wishes to take evidence directly in Brazil and has a substantive

right protected in Brazil can obviously take advantage of all applicable preparatory

proceedings made available by the Brazilian Codes of Criminal and Civil Procedure,

regardless of the party’s plans on where to submit the evidence gathered by means of

said proceedings. In other words, a company that simultaneously holds equivalent patents

in Brazil and abroad may commence legal proceedings before the Brazilian courts for the

purpose of obtaining evidence of infringement in the Brazilian territory, to substantiate

parallel claims in other jurisdictions.

What if a company does not hold a valid patent in Brazil, but wishes to directly

obtain evidence of acts performed in Brazil, as a preparatory measure for infringement

actions to be filed in other jurisdictions? The answer to this question is anything but

simple.

Under the Code of Civil Procedure, the Brazilian Judiciary has competence to

decide on a given case whenever (i) the defendant, regardless from nationality, is

domiciled in Brazil18; or (ii) the obligation must be performed in Brazil; or (iii) the

proceeding is originated from facts occurred or acts performed in Brazil (CCiP, article 88).

As briefly described in 2.2 above, certain cautelar proceedings do not qualify as

true actions, as they do not have a contentious nature, meaning that the merits of the 18 An individual shall be considered domiciled in the place of his/her permanent residence (or in the place of each of his/her permanent residences, if more than one); as regards the relations arising from the individual’s professional activity, the place in which such professional activity is performed (or each of the places in which the professional activity is performed) shall be also considered a domicile. A legal entity shall be considered domiciled in the place where its Board of Officers is located or in the venue appointed in the entity’s articles of association or Bylaws. If the company performs its business in different places, each of them shall be considered a domicile in what concerns the acts therein performed (Civil Code, articles 71, 72 and 75).

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underlying dispute shall not be dealt with in those proceedings. This is the case of the

anticipated production of evidence proceeding and of the justification proceeding, which

do not require the filing of a main action. Even if filed, the main action does not have to be

always tried by the same court. Besides, the interested party may not be the plaintiff of the

main action. In sum, these are independent cautelar proceedings, which can be

commenced by any interested party.

Under this perspective, a company that is a patentee in the Netherlands, but not in

Brazil, should be able to file an anticipated production of evidence proceeding or a

justification proceeding (as the case may be) in Brazil, against an entity domiciled in Brazil

that exports raw materials to the Dutch infringer, looking to take evidence of this fact, to be

submitted in the Dutch proceeding. The same reasoning would apply to a company that is

a defendant in an infringement action brought in France, which may commence a

proceeding in Brazil, aimed at producing evidence of the disclosure of the patented matter

in the country before the priority date.

In view of the independent nature of said specific cautelar proceedings, as well as

of the legal provisions on competence of the Brazilian courts quoted above, it is possible

to say that a company that does not have a substantive right in Brazil still may, as an

interested party, commence directly in Brazil an anticipated production of evidence

proceeding or a justification proceeding, as long as the acts to be proved have been

performed in Brazil. But it is mandatory that the plaintiff shows a real and valid legal

interest in the requested measure.

It should be noted that the filing of preparatory proceedings in Brazil by an

individual or a company that does not have a substantive right protected in Brazil,

exclusively for the purpose of obtaining evidence to be used abroad, is unusual. However,

we see no reason for not admitting, in theory, an initiative of this type, as long as the

interest of the party is duly demonstrated.

Naturally, the effectiveness of evidence obtained in Brazil through a proceeding

directly commenced by an interested party (or through any other means, including letters

rogatory) is a matter to be determined under the laws of the country in which such

evidence will be used.

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4. The Use in Brazil of Evidence Obtained in Other Jurisdictions

The ordinary way of obtaining evidence in other jurisdictions to be submitted in

Brazil is via international judicial cooperation, i.e., through letters rogatory. In this way,

witnesses’ testimony, technical expertise, and other means of evidence that require the

intervention of a foreign court will have the same effect in Brazil as those pieces of

evidence gathered in Brazil.

According to Brazilian Law, the evidence of facts occurring in a foreign country

shall be governed by the laws of such country (lex loci), as regards the means and

formalities involved in producing the evidence (Introductory Law to the Civil Code,

article 13). As a consequence thereof, if the applicable foreign law allows for the use of

coercive measures for this purpose, and said coercive measures have been duly

authorized by the foreign court, this will not impair the effectiveness and strength of the

evidence in Brazil, as long as Brazilian public policy, including fundamental rights granted

by the Federal Constitution, is not offended.

In a literal reading of the applicable legal provision, Brazilian Courts shall not admit evidence “unknown to the Brazilian law” (Introductory Law to the Civil Code, article 13). Doctrine and case-law construe this norm as a prohibition to those means of evidence that

may be considered offensive to Brazilian public policy. Otherwise, even if “unknown to the Brazilian law”, the evidence shall be admitted. After all, “[a]ll legal means of evidence, as well as those that are morally legitimate, even if not specified in this Code [of

Civil Procedure], shall be considered able to prove the truth of the facts on which the claim or the defense is grounded” (CCiP, article 332).

But the letters rogatory are not the only way of obtaining valid evidence abroad. Brazilian Courts should not refuse any type of evidence, as long as such evidence, as well as the means under which it has been obtained, is considered morally legitimate in Brazil.

An example: Company “A” holds valid equivalent patents in Brazil and Japan and

files an infringement action in Japan against Company “B”, which has been distributing the

infringing articles in the Japanese territory. Within the scope of this Japanese proceeding, it comes to light that Company “B” has been importing the infringing articles from Company “C”, domiciled in Brazil. In view of this information, Company “A” may very well

wish to file a second infringement action, this time before the Brazilian Courts, against company “C”, grounded on the equivalent Brazilian patent. Obviously, Company “A” will not be prevented from submitting along with its complaint all documentary evidence

(including technical expertise reports and the transcript of witnesses’ testimony) that it

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may have obtained in the Japanese proceeding, for the purpose, for instance, of substantiating a request for the search-and-seizure of the infringing objects produced in and exported from Brazil.

As mentioned above, Brazilian Courts will give to this evidence the relevance and

the weight they deem adequate under the concrete circumstances of the case; they may

deem it necessary to have the evidence obtained abroad repeated through a letter rogatory, or to confirm those facts by other means available in Brazil. But the utility of the Japanese evidence, in this example, is undeniable.

5. Conclusions

5.1. Protection to Intellectual Property rights is getting more and more effective in Brazil. Brazilian Courts have generally understood the importance of such protection as regards the insertion of Brazil in the international trade and the maintenance of foreign

investments in the country. 5.2. Under Brazilian law, patentees may rely on specific cautelar (preparatory)

proceedings, of both criminal and civil natures, including search-and-seizure actions and anticipated production of evidence proceedings, in order to obtain evidence of patent infringement by means of ex-parte orders. Besides, judges are granted broad cautelar

powers to order a variety of measures, as they deem appropriate and necessary. Ex-parte orders require strong likelihood of success on the merits (fumus boni iuris) and risk of irreparable harm (or a harm that may turn out to be extremely difficult to be remedied) to

the plaintiff’s rights if the order is not granted (periculum in mora). 5.3. The gathering of evidence in Brazil for litigation in other jurisdictions is generally

achieved through letters rogatory, subject to the exequatur of the Superior Court of Justice. Judicial Cooperation Agreements between Brazil and the country of origin of the order is not a requirement for the execution of letters rogatory in Brazil.

But a foreign party that wishes to take evidence directly in Brazil and has a

substantive right protected in Brazil can obviously take advantage of all applicable

preparatory proceedings made available by the Brazilian Codes of Criminal and Civil Procedure, regardless of the party’s plans on where to submit the evidence gathered by means of said proceedings.

Under certain circumstances, it is even possible to say that a company that does

not have a substantive right in Brazil still may, showing legal interest, commence directly

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in Brazil an anticipated production of evidence proceeding or a justification proceeding, as long as the acts to be proved have been performed in Brazil.

The value and effectiveness of evidence directly obtained in Brazil is a matter to be determined under the laws of the country in which such evidence will be used.

5.4. The ordinary way of obtaining evidence in other jurisdictions to be submitted in Brazil is via international judicial cooperation, i.e., through letters rogatory. In this way, witnesses’ testimony, technical expertise, and other means of evidence that require the

intervention of a foreign court will have the same effect as if gathered in Brazil. But letters rogatory are not the only way of obtaining valid evidence abroad.

Brazilian Courts should not refuse any type of evidence, as long as such evidence, as well as the means under which it has been obtained, is considered morally legitimate in Brazil, which comprises full compliance with the fundamental rights and guarantees set out in the

Federal Constitution. It is most important to stress that Brazilian Courts shall give to each piece of

evidence, either produced in Brazil or abroad, the relevance and weight they deem adequate under the concrete circumstances of the case, as judges are not bound by any particular piece of evidence.

Boston, September 8, 2008