Intellectual Property, trademarks, copyright, patents in Brazil


PTO is not a legitimate part in the review process for patent use agreement

The National Institute of Industrial Property (Brazilian PTO) is not a legitimate party in court action to review the contract concerning the use of a patent. Therefore, action about this issue should be processed in state civil courts. The Third Chamber of the Superior Court of Justice (STJ) decided unanimously, which followed the vote pronounced by Rapporteur of the appeal, Minister Sydney Beneti. Videolar S / A filed a lawsuit against the PTO and Philips Electronics NV for revise a contract about the use of a patent on the manufacture of CD and DVD. It claimed that the contract did not reflect the Regulatory Act No 135 of the PTO, which regulates the matter as it would enable large exchange rate fluctuations between the dollar and real would cause serious disadvantages for the company. In analyzing the issue, the Federal Court of the 2nd Region considered that the trial of the action would fall to state court because the incidence of simple normative act of the PTO would not attract the jurisdiction of the federal court, unless that the act was questioned. Videolar appealed then to the Supreme Court. He said that the contract should be revised reason of having become disproportionate to the benefit which was settled, and stopped obeying the rules of the PTO (Ordinance No. 436/1958). The PTO has appeared, claiming to have no interest in this judicial question. The Institute said that did not participate in the negotiation of contracts, although not admits contracts or contractual clauses that violate the law. The case, the PTO considered the defense would not be for the registration of contract (which is possible his participation), but discussion of royalties, which does not competes regularly. In its vote, the minister Beneti pointed out that the action discusses contract clauses regarding the patent and royalties payment. He noted that the request concerns the legal transaction between the companies and that is not discussed the PTO’s rule. "The only expected intervention by the PTO in action for review of the contract is outside the court, regarding only to the record, "said the rapporteur. The minister Beneti said that the decision was correct to reject the authority of passive pole of the action, and therefore sends the litigation to state court processing. The jurisdiction of federal courts is established only in those demands where the Union, its agencies or foundations effectively participate as plaintiffs, defendants, assistants or opponents. The minister also stated that the activities of the PTO are merely regulatory and record. "The demand has patrimonial nature and is strictly private, without the need for action in the PTO, " he concluded.

Source: STJ

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