Paulo Parente, Di Blasi, Parente & Associates’ managing partner and chairman of the Industrial Property and Anti-Counterfeiting Committee of OAB-RJ, talks to the Brazilian Association of Intellectual Property – ABPI’s Newsletter about educating children and teenagers on Industrial Property. Click to read. In Portuguese.
The new Civil Procedure Code (Law number 13.105 of March 16, 2015) entered into force on March 18, 2016. Our previous newsletter (part 2 of 3) discussed how to calculate the procedural term deadline; the term for the defendant’s answer to be filed; the preference of mediation, arbitration and conciliation for conflict resolution; the distribution of the burden of proof; and the possibility to hasten the decision in relation to the merit of the lawsuit. Following our previous newsletter explaining some of the updates brought by this new Civil Procedure Code, we will now address the following:
i) the modifications on the bill of review and on the appeals;
ii) the new rules concerning the motion for clarification;
iii) lawyer’s fees / defeat fees;
iv) the adoption of a preferential order for ruling of cases;
v) the proceedings for requesting disregard of corporate veil.
Article 994 of the Civil Procedure Code establishes the list of available appeals. Even though the new Code did not add any new appeal, it has removed the bill of review held on the records. This kind of bill of review was an appeal against an interlocutory decision which was considered as non-urgent. Once a party filed the bill of review, the Judge handling the decision had to analyze the bill and decide whether or not to modify his ruling. If the Judge opted not to change it, the bill of review would be held on the record and need to be further ratified by the party which submitted it, in case she lodged an appeal against the ruling afterwards.
The New Code has extinguished the bill of review held on the record. The interlocutory decision must be challenged by means of a bill of review to be appreciated directly by the Court of Appeals. The current system was actually the one in force from 1973 until 1995, when the bill of review held on the record was introduced in the former Code.
One must bear in mind that in the New Code, the bill of review may be filed against a limited number of interlocutory decisions (listed in article 1.015). The interlocutory decisions not mentioned in this article may, however, be challenged in the (possible) appeal or in the reply thereto (article 1.009, §1st).
The motion for clarification has been more thoroughly regulated in the new Civil Procedure Code, which benefited from decades of legal practice and court decisions.
Among the new dispositions, there is the possibility of filing a motion to rectify a clerical mistake (besides being able to clarify omissions, contradictions and obscurities) and the duty of the Judge to notify the adverse party to reply to the motion to clarify, whenever the motion aims at substantially modifying the decision.
The new Code also establishes that as a rule, the motion does not stay the effects of the decision, except in cases of proved urgency (even though it interrupts the flow of terms to file other motions/ appeals) and that the party which had lodged an appeal before knowing that another party had filed the motion to clarify will be given additional 15-day term to adapt its appeal in case the decision is modified.
As was set forth in the former Code, the losing party must pay defeat fees to the prevailing party’s attorneys. However, the new Code establishes that the Judge must determine the fees by using a percentage system – from 10% to 20 % – applied to the total amount earned by the prevailing party or to the value attributed to the case, if no amount was earned (article 85, §2º). This contrasts to the possibility, established in the former Code, of the Judge to arbitrate the defeat fees.
An innovation of the Civil Procedure Code is that defeat fees are now owed not only at the end of the lawsuit, but also at the end of executory proceedings, cross-claims and appeals (article 85, §1st).
The Code has determined that judicial cases must be heard and decided in chronological order (article 12). The Courts will have to keep updated lists online with the order of the cases to be heard, which greatly adds to the predictability and security of the parties.
The new Code regulates (articles 133 et seq.) the proceedings concerning requests for piercing the corporate veil, as established in article 50 of the Civil Code of 2002. Except when requested in the complaint, the request to pierce a corporate veil will proceed under separate records, and may be initiated at any rate during the proceedings.
For more details please feel free to contact us:
By Gabriel Di Blasi and Felipe Barros Oquendo
The future of Brazil’s technological innovation centres, which bring together public and private sector parties to develop mainly life sciences technology, looks bright. Gabriel Di Blasi and Felipe Barros Oquendo of Di Blasi, Parente & Associados report
Innovation is crucial for economic growth. This is especially the case for developing countries such as Brazil, where an underdeveloped technology industry is seen as one of the main hindrances to growth and general prosperity. In order to provide public incentives for innovation, Brazil has enacted a series of laws, the most important being the Federal Act No. 10,973/2004, known as the technological innovation act. Aside from tax incentives, important aspects of this law are science and technology institutes and their technological innovation centres (TICs).
As defined by the technological innovation act, TICs are public centres or bodies set up by one or more science and technology institutes. These institutes are also public bodies, the goals of which include engaging in basic research activities and research and development (R&D) in the scientific and technological fields. Nowadays, most institutes are part of public universities, which in Brazil represent the best higher education centres available for students and researchers.
TICs typically control the disclosure of developed technological or scientific creations, evaluate innovations and technologies, seek the best protection for the developed technologies, negotiate, draft, manage and enforce technology transfer agreements, as well as licence agreements in connection with intellectual property or know-how developed by the institute.
These responsibilities imply other ancillary but nonetheless vital supporting roles, such as defining the ownership of IP rights and the territories to be protected, managing costs and payments related to IP rights and know-how, and working with the Brazilian Patent and Trademark Office and law firms to tackle the legal aspects of the technology development of the institute. Even though the chief executive of the institute will typically retain some powers of negotiation and the right to conclude cooperation agreements and similar covenants, the TIC acts as the centralised administrator of IP rights in an institute.
One of a TIC’s pivotal goals is to ensure the possibility of obtaining IP rights whenever possible, as well as to secure the confidentiality over R&D activities that the institute is engaged in. This of course means developing a results-oriented internal IP rights policy—aside from external and general policies—aimed specially at those people managing the institute’s main activities.
As a rule, researchers at TICs have the right to receive between 5% and 33% of the institute’s earnings stemming from the developed technology. The amount is to be regulated within these limits by each institute. Researchers do not hold any power over negotiations concerning the technology that they contribute to developing: article 6 of the act clearly provides that only the owners of the resulting IP/ know-how are entitled to assign or license it.
Moreover, article 12 of the act forbids researchers allocated to any level of the R&D process from disclosing any part of it, in order to preserve novelty and/or confidentiality. This is an important restriction, aiming at securing private investors’ and the institute’s interests, especially given the huge pressure (coming mainly from the Ministry of Education and related public bodies) on public researchers to publish scientific articles in order to maintain scholarships and subsidies. This prohibition also comes amid support of the deeper goal of the overall innovation policy in Brazil, which is to promote technological and social development in the country (article 5, item XXIX of the Brazilian Constitution).
A reminder of the focus on results of institutes is the strict obligation imposed on them to maximise IP protection of innovation and know-how eventually acquired from projects developed under the act. Far from constituting an ideal or abstract rule, this results-driven stance is posed as a binding determination on the public administration as a whole and to public servants engaged in R&D activities in particular.
“AS A RULE, RESEARCHERS AT TICS HAVE THE RIGHT TO RECEIVE BETWEEN 5% AND 33% OF THE INSTITUTE’S EARNINGS STEMMING FROM THE DEVELOPED TECHNOLOGY.”
Unsurprisingly, TICs have a crucial role in internal enforcement of institutes’ innovation policy, mainly granting that the information surrounding R&D procedures and results remains under strict confidentiality. Besides concluding and enforcing non-disclosure agreements with potential investors, partners and buyers of technology developed by an institute’s researchers, a TIC commonly drafts similar agreements with the institute’s own personnel, in an effort to secure the patentability and secrecy of its inventions and technological know-how. Ultimately, the TIC’s goal is to guarantee a return on R&D.
Other internal policies should be—and usually are—available in order to achieve the TIC’s goal of maximising benefits for the institute and its private collaborators. It is common to see TICs promoting workshops, panels, and manuals reinforcing the potential financial benefits for the researchers stemming from maintaining secrecy and working with a view to IP rights protection.
In addition, most TICs lay down a strict public policy that researchers and all collaborators must immediately report on any innovation or technological development eligible for protection under IP or trade secret laws. As a complement to this policy, the researcher will typically work on an exclusive basis with the institute. On the other hand, researchers are entitled to obtain technical and legal information from the TIC in support of their activities.
One should bear in mind that, despite legal obligations, not all institutes have fully working TICs to help them with creating, managing and enforcing innovation policies.
The number of implemented TICs is growing annually. According to a report issued by the federal government, there was an 8.4% growth in 2014 compared to the previous year.
When available, the TICs represent a major security factor to private parties intending to invest, collaborate or negotiate with institutes due to the goal-oriented policies established and enforced by TICs. In addition, TICs are the main mediators between institutes and private business, helping to achieve a balanced view on negotiations and partnerships, as well as to curb any anti-entrepreneurial tendencies, which unfortunately are not uncommon in the public administration in general. To achieve its mission, a TIC typically recruits its personnel from the private sector to guarantee a business mentality.
More important, TICs have the institutional mission of acting as enablers of partnerships between private business and institutes. Due to this specific role, TICs are quite sensitive to market demands and aim to implement a functional, modern management. This is achieved through establishing clear innovation and IP rights goals and efficient communication channels with both private business and institutes’ researchers.
According to the 2014 government report, a total of 2,163 IP applications were filed by Brazilian science and technology institutes last year as a direct result of the IP policy set out by TICs. This represents double the number of all applications filed by such institutes between 2010 and 2013.
TICs are fairly advanced in the life sciences field. Successful examples of fully functional TICs are Instituto Butantan, located in São Paulo, which is mainly focused on biotechnology, and Fundação Fiocruz, based in Rio de Janeiro, a specialist in the biomedicine field.
TICs have been proving to be an essential tool for developing innovation in Brazil, mainly in the life sciences field, through promoting and enabling the participation of private business in public technology centres. With the expected growth and maturation of TICs, the future is looking bright for technology development in Brazil.
Gabriel Di Blasi is a partner at Di Blasi, Parente & Associados. He has a technical background in industrial engineering and experience in patent prosecution and litigation. His core practice areas include patents, designs, plant variety rights, tech transfer, and trade secrets matters. He can be contacted at: email@example.com
Felipe Barros Oquendo is a Brazilian attorney-at-law at Di Blasi, Parente & Associados. He holds a Master’s in corporate, labour and industrial property law from the Estate University of Rio de Janeiro. His practice focuses on litigation and consultation related to intellectual property and unfair competition, as well as sports and entertainment law. He can be contacted at: firstname.lastname@example.org
By Gabriel Di Blasi e Paulo Parente Marques Mendes.
Click here to download TLR e-Book form – Intellectual Property.
Upcoming Event, May 16th – The role of the BPTO during 20 years of the Industrial Property Law in Brazil. (RSVP to: email@example.com)